How does non-functional printed matter affect the patentability of product claims?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Non-functional printed matter does not distinguish a claimed product from an otherwise identical prior art product. This principle is explained in MPEP 2112.01(III):

“Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art.” In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004).

The key consideration is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. If there is no such relationship, the printed matter is considered non-functional and cannot be used to distinguish the invention from the prior art in terms of patentability.