The CAFC addresses the printed matter doctrine in IN RE: THOMAS L. DISTEFANO, III
As to the printed matter doctrine:
When determining a claim’s patentability, the Board
must read the claim as a whole, considering each and
every claim limitation. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983). However, we have long held that if a
limitation claims (a) printed matter that (b) is not functionally
or structurally related to the physical substrate
holding the printed matter, it does not lend any patentable
weight to the patentability analysis. Id. at 1384–85.
In performing this analysis we do not strike out the
printed matter and analyze a “new” claim, but simply do
not give the printed matter any patentable weight: it may
not be a basis for distinguishing prior art. As we opined
in In re Gulack:
Where the printed matter is not functionally related
to the substrate, the printed matter will not
distinguish the invention from the prior art in
terms of patentability. Although the printed matter
must be considered, in that situation it may
not be entitled to patentable weight.
Id. at 1385 (footnote omitted).
**In passing, from Ex parte Gilmour:
The Board affirmed the obviousness rejection by finding that the limitation at issue was not to be given patentable weight. First, the Board noted that the limitation appeared to be intended use, as it "added no structure to the claim nor functionally changes the 'at least one set of text' that it modifies."
Furthermore, according to the Board, "authored not for any purpose related to creating or accessing a profile" was a mental step and as such, it was not entitled to patentable weight. Although the mental steps doctrine is typically used to analyze for compliance with 101, the Board found it also appropriate in assessing patentable weight
**In passing, as to "no patentable weight", from Tom Brody, 13 JMRIPL 251 (2014), see discussion of Application of Benson, 418 F.2d 1251 (CCPA 1969 )
** Also, from allthingspros: http://allthingspros.blogspot.com/2014/07/ptab-assume-any-verb-phrase-using-to.html
**In re Morsa is cited: Anticipation is a factual question and
thus reviewed for substantial evidence. In re Morsa, 713
F.3d 104, 109 (Fed. Cir. 2013).
The issue in Morsa was the enablement of the PMS reference.
See post at alleylegal: http://alleylegal.com/2015/10/in-re-morsa-ii-prosecution-lessons/