Nonfunctional Descriptive Material vs. 'Printed Matter': The PTAB's Defiance of Federal Circuit Precedent

AuthorDavid E. Boundy
Pages46-51
Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
“Nonfunctional
Descriptive
Material” vs.
“Printed Matter”
The PTAB’s Deance of Federal Circuit Precedent
By David E. Boundy
O
ne of the truly remarkable phenomena in the
history of both patent law and administra-
tive law is the ve-decade dispute
between the Board of Patent Appeals
and Interferences (BPAI or Board), now
the Patent Trial and Appeal Board (PTAB
or Board), and the Federal Circuit on the
denition of “printed matter.
For over 50 years, the Court of Customs and Patent
Appeals (CCPA) and its successor, the Federal Circuit, have
been consistent in dening a “printed matter” rule: claim lan-
guage that consists of “printed lines or characters, useful and
intelligible only to the human mind,” recited for the informa-
tion content it communicates, and not “functionally related to
its substrate,” may be denied patentable weight for § 102 and
§ 103 purposes. The two courts have held several times that
the “printed matter” rule has no relevance to computer data.1
In contrast, the Board has settled into a long-term disagree-
ment with the Federal Circuit. The PTAB’s view is that any
“nonfunctional descriptive material” (a term that is nowhere
dened) is to be denied patentable weight for § 102 and § 103
purposes, even if it is computer data entirely imperceptible to
humans,2 and that the relationship between computer data and
its containing memory is generally not “functional.”
The Board adheres to this view despite the Federal Cir-
cuit’s regular warnings under administrative law that
“[j]udicial precedent is as binding on administrative agen-
cies as are statutes,” and “the PTO lacks the substantive
rulemaking authority to administratively set aside judicial
precedent”;3 and under substantive law that the Federal Cir-
cuit is “notably weary” in reminding the Board that the
“printed matter” rule does not apply to computer data.4
It is hard to explain the Board’s view as anything other
than brazen deance. Further, it is hard to square the Board’s
assertion of rulemaking authority with any principle of
administrative law. The Board’s “nonfunctional descriptive
material” errors have imposed immense costs on the pub-
lic: a 2017 webinar noted that the U.S. Patent and Trademark
Ofce (USPTO) has invoked “nonfunctional descriptive
material” in over 34,000 ofce actions, mostly in the com-
puter arts where the Federal Circuit tells us it should have “no
relevance.”5 At $3,200 each,6 the Board’s errors have imposed
costs well over $100 million on this issue alone.
This article discusses the long-standing conict between
the Board and Federal Circuit. This article appeals to the
principle of res ipsa loquitur to suggest that there is a
systemic problem in the USPTO’s legal apparatus, and rec-
ommends several corrective actions.
The Federal Circuit’s “Printed Matter” Rule
For nearly 100 years, the CCPA and Federal Circuit have applied
a “printed matter” rule, under which claim language directed
to printed matter may be denied patentable weight in a § 102
or § 103 rejection.7 The typical “printed matter” case involves
a new use of an old apparatus, claimed as the old apparatus
with paper instructions (or merely “instructing” on no recited
Image: GettyImages

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