In the intricate realm of patent prosecution, legal doctrines play a pivotal role in defining the scope of patentable subject matter. Among these doctrines, the Printed Matter Doctrine stands as a nuanced concept that has the capacity to intrigue and perplex patent practitioners. While its essence appears straightforward, this doctrine has showcased a propensity for unforeseen applications, especially in non-traditional contexts. This post reviews a recent case that demonstrates the USPTO's unexpected application of the doctrine in a subtle yet impactful manner.
At its core, the Printed Matter Doctrine endeavors to distinguish patentable subject matter from mere informational content disseminated through printed materials. Initially tailored to printed publications and textual matter, the doctrine has evolved to encompass diverse forms of information presentation, including GUIs (see previous post here). Underlying its application is the principle that information, in isolation, is typically ineligible for patent protection. Instead, the focus shifts towards assessing whether the information serves a meaningful, functional purpose within a practical application or solution.
Recent years have witnessed the USPTO employing the Printed Matter Doctrine in unexpected and non-traditional scenarios. This becomes apparent when patent applications involve subject matter that may not overtly resemble traditional printed materials. This approach underscores the USPTO's dedication to ensuring patent claims center on concrete inventions with tangible applications, rather than abstract notions or information.
A compelling case (Appeal 2023-001729 Application 17/595,441) that exemplifies the USPTO's strategic application of the Printed Matter Doctrine revolves around an innovation tied to a pattern on an absorbent pad. In a subtly surprising move, the USPTO invoked the doctrine sua sponte, evaluating whether the pattern exhibited a functional relationship with the absorbent pad. The doctrine's unexpected deployment cast doubt on the patentability of the pattern, prompting contemplation of whether its integration into the pad's functionality warranted patent protection or merely represented informational content.
Claim 1 on appeal is reproduced below:
claim 1: An absorbent pad comprising[:]
a fluid permeable topsheet, a backsheet and an absorbent core including a first core layer being located between the topsheet and the backsheet, the absorbent core having first and second longitudinal side edges and front and rear end edges, the absorbent core having a front portion, a rear portion and an intermediate portion located between the front portion and the rear portion, as seen in a longitudinal direction of the absorbent pad, the front portion, the rear portion and the intermediate portion being of equal lengths, the absorbent core having a width varying no more than 20 mm along a length of the absorbent core extending in the longitudinal direction of the absorbent pad, wherein the topsheet in a printed central absorption zone, arranged over the front portion, the rear portion and the intermediate portion of the absorbent core, is provided with a first printed pattern comprising first print elements, wherein the topsheet in a peripheral security zone arranged at least over the rear portion of the absorbent core is provided with a second printed pattern comprising second print elements, and wherein a degree of coverage of the second printed pattern is at least 30% greater than a degree of coverage of the first printed pattern.
At issue was the claim limitation relating to the degree of coverage of the first and second printed patterns, which was defined in the specification as relating to the density of coverage. The cited art did not show the particular range claimed. The PTAB determined that the prior art need not teach the particular feature because it was merely printed matter (internal citations omitted).
According to claim 1, the first and second printed patterns are arranged over two different zones of the pad’s absorbent core: the printed central absorption zone and the peripheral security zone, respectively. This indicates that the printed patterns are intended to communicate to a user the location of the absorbent core, and more specifically the location of different parts of the absorbent core. The Specification further indicates that the claimed printed patterns and degree-of-coverage limitation are intended to convey “a sense of security” to a user during night-time use. According to the Specification, the “first sparser printing pattern” in the printed central absorption zone “gives the wearer a sense of security with a high absorbent central portion and an extensive peripheral security zone provided around the central absorption zone,” which helps the user “feel confident that the absorbent pad has a sufficient absorbent capacity and does not leak [to] improve the sleep of the wearer and the confidence during the day.”. The Specification also discloses that “[t]he second printed elements may have a larger mean size than the first printed elements,” which “has also been found to promote the impression of a large size peripheral zone of the topsheet and the absorbent pad.” According to the Specification, the degree-of-coverage limitation “has been found to provide the [users] with a visual impression of a high absorbent central portion and an extensive peripheral rear portion giving the users a sense of security.” The Specification thus indicates that the limitations directed to the first and second printed patterns are meant to communicate to a user that the absorbent pad is sufficiently absorbent to protect the user, and thus give the user a sense of security and comfort. We therefore determine that these limitations are directed to printed matter
Here, the statements in the specification cited by the PTAB focused on how the visual pattern could be understood by a user to convey information, and did not indicate a functional or technical reason for the patterns or the specific range of coverage. Thus, the PTAB found no functional relationship:
This case offers a thought-provoking lesson, highlighting the USPTO's adroit and nuanced approach. Patent practitioners traversing these intricacies must remain vigilant, foreseeing the potential application of the Printed Matter Doctrine even in cases that may ostensibly stray from traditional printed materials.
In conclusion, the Printed Matter Doctrine captures the dynamism of patent law and the USPTO's inventive application thereof. As illustrated by the absorbent pad pattern case, patent professionals must retain vigilance and adaptability, particularly when it comes to anticipating the potential application of established doctrines in novel contexts. The doctrine's enduring objective remains unswerving: securing patentable subject matter rooted in pragmatic innovation rather than mere dissemination of information. As the landscape of patent prosecution evolves, a keen understanding of the Printed Matter Doctrine's nuances and its propensity for unexpected applications will undoubtedly prove invaluable to those championing the complexities of intellectual property law.