PRAXAIR DISTRIB., INC. v. MALLINCKRODT HOSP. PRODS., 16-2616, 16-2656, decided May 16, 2018

U.S. Patent No. 8,846,112, directed to distribution of nitric oxide cylinders.

The claims are directed to providing the cylinder and providing information indicating risk (pages 3-5).  Dependent claim 9 added checking for the risk and discontinuing (page 5).  Claim limitations directed to the content of the information without a functional relationship are not given patentable weight (page 10).  Claim limitations directed to thinking about information in printed matter are still directed to printed matter, so not given patentable weight (page 13).  The “pharmaceutically acceptable” limitation does not make the information have a functional relationship (pages 13-14).   Claim 9 requires action by a physician as a result of a recommendation in the claimed information, creating a functional relationship (pages 16-17).  Even with this interpretation for claim 9, the prior art shows monitoring if at risk, so it would have been obvious to discontinue (pages 18-19). 

Hindsight:  For printed matter, providing for a physical reaction based on the information where the reaction relates to the physical substance recited in the claim may be important.  The more acts or steps are directed to novelty, the better.  In this case, the action related to conventional medical practice, so finding the act obvious is made easier.