In Re: Distefano, 808 F.3d 845

Appellant DiStefano claimed a computer-implemented method for designing web pages via a user interface with two display regions and selecting web assets (e.g., applets, images) authored by third parties or provided by the user.
Independent claim 24 requires selecting a first element from a database including third-party-authored web assets and user-provided web assets, displaying/editing it in a second region, and then displaying the modified element in the first region as part of the electronic document.
The Patent Trial and Appeal Board rejected claims 24–26 as anticipated by U.S. Patent No. 6,026,433 (D’Arlach), treating the claimed “origin” of web assets as printed matter and giving that limitation no patentable weight.
On prior appeal the Federal Circuit remanded because the Board had mischaracterized its rejection; on remand the Board again affirmed anticipation based on the printed-matter treatment of asset origin.
The Federal Circuit reviews legal conclusions de novo and factual findings for substantial evidence; it considered whether the Board erred in treating the web-asset “origin” as printed matter and thus discounting that limitation.

Issue	DiStefano's Argument	Director's Argument	Held
Whether the claim limitation about web-asset origin is “printed matter”	The claimed origin (third-party vs. user-provided) is not content of the web asset and thus not printed matter	The Board treated the origins (not the assets themselves) as printed matter and thus not entitled to weight	The court held the Board erred: origin is not printed matter because it is not the claimed informational content
Whether the printed-matter doctrine can negate patentable weight of the origin limitation	Origin is not part of the asset’s communicative content and cannot be stripped out	The Board argued origins have no functional relationship and thus give no weight	The court vacated anticipation because the threshold printed-matter finding was incorrect
Whether claim 24 is anticipated by D’Arlach once origin is given weight	Claim elements other than origin were conceded anticipated, but origin distinguishes claim	Board asserted that origin cannot patentably distinguish over D’Arlach	The court vacated the Board’s §102 rejection of claim 24 and remanded for further findings
Effect on dependent claims 25–26	Dependent claims rely on claim 24; incorrect antecedent analysis affects them	Board found them anticipated as well	Court vacated Board’s anticipation findings for claims 25–26 and remanded

In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) (printed matter must be content-based and is given weight only if functionally related to substrate)
In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (database structures not printed matter when they include functional/structural relationships)
In re Russell, 48 F.2d 668 (CCPA 1931) (arrangement of printed matter alone not patentable)
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010) (labels and instructional content treated as printed matter)
In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) (instructions in a kit considered printed matter)