Monday, July 11, 2016

“Providing . . . Information” Step of Challenged Claim Constitutes Printed Matter Not Entitled to Patentable Weight

In a final written decision finding claims of a patent directed to methods of distributing a pharmaceutical product unpatentable under 35 U.S.C. § 103(a), the Board determined that portions of the challenged claims were printed matter and therefore not entitled to patentable weight. "[W]e view the information described in [portions of the challenged claims] as printed matter, and, thus, not entitled to patentable weight. In the present case, a cylinder containing compressed nitric oxide gas can be obtained and supplied to a medical provider with, or without, the information recited in [the prescribing information supplied to the medical provider]. Because the 'method of providing pharmaceutically acceptable nitric oxide gas' can be performed irrespective of whether that knowledge is conveyed, we conclude that the step of 'providing . . . information' lacks a functional relationship to the remaining claim elements, and, therefore, accord it no patentable weight."

Petition for Inter Partes Review by Praxair Distribution, Inc., IPR2015-00529 (PTAB July 7, 2016, Order) (Pollock, APJ)

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