Overuse of “printed matter” doctrine

The associate solicitor for the USPTO ran into a buzz saw in the form of Judges Taranto and Hughes in the oral argument of In re Distefano.  The USPTO was fortunate as Chief Judge Prost opted to write the opinion for the court in this case.  She was the least vocal during the oral argument in criticizing the PTO and the opinion was somewhat tame compared to the oral argument.

As one example of the criticism, Judge Hughes remarked during the oral argument:

I mean you’re really asking us to let you be lazy. I don’t mean to be mean about it, but this is the third printed matter case I’ve seen from you all and I’ve only been here two years. And, they’ve all involved instances like this where the Board is trying to fix a sloppy examiner’s rejection.

You can listen to that comment here: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the opinion here [Read].

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