  United States Court of Appeals
      for the Federal Circuit
                 ______________________

        IN RE: THOMAS L. DISTEFANO, III,
                      Appellant
               ______________________

                       2015-1453
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 10/868,312.
                  ______________________

              Decided: December 17, 2015
                ______________________

   SCOTT D. PAUL, Cuenot, Forsythe & Kim, LLC, Boca
Raton, FL, argued for appellant.

    MICHAEL SUMNER FORMAN, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Michelle K. Lee. Also represented
by THOMAS W. KRAUSE, MEREDITH HOPE SCHOENFELD.
                 ______________________

Before PROST, Chief Judge, TARANTO and HUGHES, Circuit
                        Judges.
PROST, Chief Judge.
    Mr. Thomas L. DiStefano, III, appeals the U.S. Patent
and Trademark Office, Patent Trial and Appeal Board’s
(“Board”) rejection of claims 24 through 26 of U.S. Patent
Application No. 10/868,312 (’312 Application). The Board
issued a Decision on Remand on July 16, 2014, and then
2                                         IN RE: DISTEFANO




issued a Second Decision on Request for Rehearing on
December 3, 2014. 1 The Board’s decision affirmed the
rejection of claims 24 through 26 under 35 U.S.C. § 102
for anticipation based upon U.S. Patent No. 6,026,433
(“D’Arlach”). In so doing, the Board determined that one
of the limitations of independent claim 24 fell within the
printed matter doctrine and therefore was not entitled to
patentable weight. This court vacates and remands. 2
                      BACKGROUND
    Mr. DiStefano’s patent application claims a method of
designing web pages. The purported invention is a meth-
od that enables an individual to design a web page with-
out requiring them to “learn HTML or to interact
extensively with a web page designer.” ’312 Application
at 3, ll. 12–15.
    The application’s primary embodiment includes a
graphical user interface composed of a primary display
screen and an overlaid design plate. The overlaid design
plate is composed of several parts, including menu but-
tons to assist in editing the website and a design place
that can be used to display and edit web assets. The
application describes web assets as including Java ap-
plets, scripts, stock art, digital art, background images,
textures, etc. The web assets can come from a web asset
database, be uploaded directly by users, or be obtained
from independent third party websites. When the user
finishes editing a web asset, the user can drag the web
asset from the design plate onto the website.



    1   Pursuant to 37 C.F.R. § 41.52(a)(1) the Board in-
corporates the holdings of the Decision on Remand in its
Second Decision on Remand, except for when the deci-
sions conflict.
    2   The court does not reach the claim construction
dispute regarding dependent claim 25.
IN RE: DISTEFANO                                         3



    There is only one independent claim at issue in this
case, claim 24. Claim 24 reads:
   A method of designing, by a user in a user inter-
   face having first and second display regions each
   capable of displaying a plurality of element [sic],
   an electronic document, comprising:
   selecting a first element from a database includ-
   ing web assets authored by third party authors
   and web assets provided to the user interface or
   outside the user interface by the user;
   displaying the first element in the second display
   region;
   interactively displaying the electronic document
   in the first display region;
   modifying the first element displayed in the sec-
   ond display region upon receiving a first command
   to modify the first element in the second display
   region; and
   displaying the modified first element in the first
   display region, wherein the modified first element
   forms at least part of the electronic document.
’312 Application at 19 (emphasis added).
    This is not the first time this case has been before us
on appeal. We previously held in this case that the Board
had not properly designated its anticipation rejection as a
new ground of rejection and we therefore remanded this
case back to the Board. In re DiStefano, 562 F. App’x 984,
984 (Fed. Cir. 2014).
    On remand, the Board found that D’Arlach anticipat-
ed claims 24 through 26. The Board’s analysis focused on
claim 24’s limitation “selecting a first element from a
database including web assets authored by third party
authors and web assets provided to the user interface
from outside the user interface by the user” (henceforth
referred to as the “selecting limitation”) as the parties
agreed that all of the other limitations were anticipated
4                                         IN RE: DISTEFANO




by D’Arlach. J.A. 5–12. The Board determined that the
selecting limitation should not be afforded patentable
weight under the printed matter doctrine. Thus because
all the other limitations had been conceded as anticipated
by D’Arlach, the Board concluded that claim 24 was
invalid as anticipated. 3
    In performing the printed matter analysis, the Board
concluded that “web assets’ origination from third party
authors and the user cannot patentably distinguish (i.e.,
cannot breathe novelty into) the claimed method, particu-
larly because the web assets’ origins have no functional
relationship to the claimed method.” J.A. 32. That con-
clusion treats the “origins” as printed matter. See also
J.A. 33 (“the web assets’ origins clearly cannot be func-
tionally related to the claimed method and therefore
cannot patentably distinguish the claimed method over
D’Arlach”). Moreover, in this court, the Director defends
the printed-matter rejection only on the ground that the
Board treated the origins, not the web assets themselves
as printed matter. Appellee’s Br. 19. The Director does
not rely on the Board’s footnote in its response to a re-
quest for rehearing that “[t]he ‘printed matter’ is analo-
gous to the web assets.” J.A. 18 n.11.
    Mr. DiStefano now appeals. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
    We review the Board’s decision in accordance with the
Administrative Procedure Act. Dickinson v. Zurko, 527
U.S. 150, 165 (1999). We review the Board’s factual
findings for substantial evidence and the Board’s legal


    3   The Board additionally concluded that claims 25
and 26 were also anticipated, but as we ultimately find
the Board’s anticipation analysis of claim 24 to be in
error, we need not discuss the dependent claims.
IN RE: DISTEFANO                                          5



conclusions de novo. In re Gartside, 203 F.3d 1305, 1315–
16 (Fed. Cir. 2000). Anticipation is a factual question and
thus reviewed for substantial evidence. In re Morsa, 713
F.3d 104, 109 (Fed. Cir. 2013).
    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 func-
tionally or structurally related to the physical substrate
holding the printed matter, it does not lend any patenta-
ble 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 re-
    lated to the substrate, the printed matter will not
    distinguish the invention from the prior art in
    terms of patentability. Although the printed mat-
    ter must be considered, in that situation it may
    not be entitled to patentable weight.
Id. at 1385 (footnote omitted).
    The first step of the printed matter analysis is the de-
termination that the limitation in question is in fact
directed toward printed matter. Our past cases establish
a necessary condition for falling into the category of
printed matter: a limitation is printed matter only if it
claims the content of information. See 1 Chisum on
Patents § 1.02[4] (2015) (printed matter, for giving no
weight to “information recorded in any substrate or
medium” in comparing prior art and claimed subject
matter, is limited to “the content of the information”).
6                                           IN RE: DISTEFANO




    The printed matter doctrine dates back to Ex Parte
Abraham, 1869 C.D. 59 (Comm. Pat. 1869) (finding that
coupons with various kinds of stamps and figures are not
patentable). 4 However, the modern rule did not fully
develop until 1931 in the case In re Russell, 48 F.2d 668,
669 (CCPA 1931). The claimed invention in Russell
related to “improvements in indexes particularly to the
indexing of names in directories, and is claimed to be
applicable to dictionaries, etc.” Id. at 668. 5 Our predeces-
sor court held that “[t]he mere arrangement of printed
matter on a sheet or sheets of paper, in book form or
otherwise, does not constitute any new and useful art,


    4   The patent application at issue in this case was
described as follows:
    In order to accomplish the object in view, the ap-
    plicant proposes to employ stamps of various
    kinds with coupons annexed, to be severed when
    the stamp is attached to the dutiable article. The
    stamps bear figures indicative of the quantity and
    quality and other peculiarities of the article. The
    coupons correspond, and by means of these, and
    registers of them kept by the government, it is
    claimed that frauds in evading the tax are pre-
    vented.
Abraham, 1869 C.D. 59.
    5   Claim 6 of the patent application is representative
and reads:
    A directory comprising a part in which surnames
    are arranged phonetically with the given names of
    the respective surnames arranged otherwise than
    phonetically, and another part in which the sur-
    names are arranged otherwise than phonetically
    with reference to the section in the first-
    mentioned part where surnames are arranged
    phonetically.
Russell, 48 F.2d at 668.
IN RE: DISTEFANO                                        7



machine, manufacture, or composition of matter, or any
new and useful improvements thereof . . . .” Id. at 669
(internal quotation marks omitted).
    Since 1931, both our predecessor court and our court
have consistently limited the printed matter rule to
matter claimed for its communicative content. After
Russell, our predecessor court found that “a chart listing
the characteristics of real estate in such manner as to
expedite real estate assessments” 6 and markings on meat
“arranged in a certain manner for the purpose of identify-
ing the meat” were both printed matter. 7 In re McKee, 64




   6    Claim 2 of the relevant application is representa-
tive and reads:
    A valuation chart for buildings comprising a rec-
    ord sheet having details of building constructions
    arranged in groups designated by classes, each
    class having listed thereunder the details of build-
    ing construction frequently found in buildings of
    that class, and the details being arranged similar-
    ly in order in all the classes, whereby when the
    details of construction of a building to be valued
    are checked on the record sheet under the nearest
    approximated classes, the preponderance of
    checks in any class group will directly indicate the
    class of buildings to which that particular building
    belongs and the checks missing in that class group
    or found in the groups of the other classes will in-
    dicate directly the extent to which that building
    being valued differs from the usual run of build-
    ings of that class.
In re Reeves, 62 F.2d 199, 199 (CCPA 1932) (emphasis
added).
    7   Claim 3 of the relevant patent application is rep-
resentative and reads:
8                                          IN RE: DISTEFANO




F.2d 379, 379–80 (CCPA 1933). More recently we con-
cluded that an FDA label providing the dosage instruc-
tions for using a medical product was printed matter, 8
that a label instructing a patient to take a drug with food
was printed matter, 9 that instructions on how to perform
a DNA test were printed matter, 10 and that numbers


    A principal cut of meat bearing a series of identify-
    ing marks in relatively close spaced relation and
    having their longitudinal axes arranged substan-
    tially parallel to the planes in which said meat is
    to be subdivided in forming minor cuts of meat for
    purchasers.
McKee, 64 F.2d at 379 (emphasis added).
    8    Claim 17 is representative and reads:
    A kit for treating a respiratory disease, the kit
    comprising (a) a budesonide suspension in a
    sealed container, the suspension containing 0.05
    mg to 15 mg budesonide and a solvent, and (b) a
    label indicating administration by nebulization in
    a continuing regimen at a frequency of not more
    than once per day.
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1048 (Fed.
Cir. 2010) (emphasis added).
    9    King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1279 (Fed. Cir. 2010) (citing claim 21). Claim 21
depends on claim 17 and is representative. It reads:
    The method of claim 1, further comprising inform-
    ing the patient that the administration of a thera-
    peutically effective amount of metaxalone in a
    pharmaceutical composition with food results in
    an increase in the maximal plasma concentration
    (Cmax) and extent of absorption (AUC(last)) of
    metaxalone compared to administration without
    food.
    U.S. Patent 6,407,128.
    10   Claim 19 is representative and reads:
IN RE: DISTEFANO                                       9



printed on a wristband were printed matter. 11 By con-
trast, we found in In re Lowry, 32 F.3d 1579 (Fed. Cir.
1994), that a computer-based structural database was not
printed matter, not because it involved a computer, but
because the data structures “contain[ed] both information
used by application programs and information regarding
their physical interrelationships within a memory.”
Lowry, 32 F.3d at 1583–84. 12




   A kit for normalizing and amplifying an RNA
   population, said kit comprising instructions de-
   scribing the method of claim 1 and a premeasured
   portion of a reagent selected from the group con-
   sisting of: oligo dT biotinylated primer, T7 RNA
   polymerase, annealed biotinylated primers, strep-
   tavidin beads, polyadenyl transferase, reverse
   transcriptase, RNase H, DNA pol I, buffers and
   nucleotides.
In re Ngai, 367 F.3d 1336, 1337–38 (Fed. Cir. 2004)
(emphasis added).
   11   Claim 1 is representative and reads:
   An educational and recreational mathematical
   device comprising at least one band which is end-
   less or adapted to have ends thereof fastened to
   form an endless band and a plurality of individual
   digits imprinted on the band at regularly spaced
   intervals, the digits when all read consecutively
   clockwise as a number constituting a quotient ob-
   tained by dividing a number constituted of . . .
Gulack, 703 F.2d at 1383 (emphasis added).
   12   Claim 1 is representative and reads:
   A memory for storing data for access by an appli-
   cation program being executed on a data pro-
   cessing system, comprising:
   a data structure stored in said memory, said data
   structure including information resident in a da-
10                                        IN RE: DISTEFANO




    The common thread amongst all of these cases is that
printed matter must be matter claimed for what it com-
municates. Only if the limitation in question is deter-
mined to be printed matter does one turn to the question
of whether the printed matter nevertheless should be
given patentable weight. Printed matter is given such
weight if the claimed informational content has a func-
tional or structural relation to the substrate. For exam-
ple, in Gulack we determined that while a sequence of
digits printed on a wrist band constituted printed matter,
the sequence deserved patentable weight because the
informational content of the sequence (what numbers
were represented) was functionally related to the endless-
band physical structure of the substrate. Gulack, 703
F.2d at 1385. Similarly, in In re Miller, our predecessor
court determined that while the text written on a measur-
ing vessel was printed matter, it must be given patentable
weight because there was a “functional relationship
between a measuring receptacle, volumetric indicia
thereon indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio, and in our
judgment the appealed claims properly define this rela-
tionship.” 418 F.2d 1392, 1396 (CCPA 1969). Thus, as we
have consistently held, once it is determined that the
limitation is directed to printed matter, one must then
determine if the matter is functionally or structurally
related to the associated physical substrate, and only if
the answer is “no” is the printed matter owed no patenta-
ble weight.
    Here, the Board erred at the threshold step. Although
the selected web assets can and likely do communicate
some information, the content of the information is not



   tabase used by said application program and in-
   cluding: . . .
Lowry, 32 F.3d at 1581 (emphasis added).
IN RE: DISTEFANO                                       11



claimed. And where the information came from, its
“origin,” is not part of the informational content at all.
Nothing in the claim calls for origin identification to be
inserted into the content of the web asset. Therefore, the
Board erred in finding that the origin of the web assets
constituted printed matter in the claims at issue and
erred in assigning the origin no patentable weight under
the printed matter doctrine in finding anticipation by
D’Arlach. Thus we vacate the Board’s finding that claim
24 was anticipated under 35 U.S.C. § 102. In so doing we
also vacate the Board’s finding that dependent claims 25
and 26 are anticipated.
                      CONCLUSION
    For the reasons discussed above, we vacate the
Board’s rejection of claims 24 through 26 under 35 U.S.C.
§ 102 and remand for further findings.
             VACATED AND REMANDED
                         COSTS
   Costs awarded to Appellant.
