United States: Affidavits Or Declarations Are Not Always Required When Submitting Arguments Concerning Lack Of Enablement Of Prior Art Reference

In In re Morsa, No. 12-1609 (Fed. Cir. Apr. 5, 2013), the Federal Circuit vacated the Board's enablement and anticipation determinations, affirmed the Board's obviousness conclusions, and remanded to the Board for further proceedings, including an enablement analysis in accordance with the Court's instructions.

On April 12, 2001, Steve Morsa filed a patent application that disclosed a method and apparatus for receiving a benefit information request from a user, searching a benefit information database for benefits matching the user's request, and then returning benefit information to the user.  During proceedings before the PTO, the examiner rejected the application as unpatentable over a single reference, Peter Martin Associates Press Release ("PMA").  The PMA is a September 27, 1999, publication that announced the release of "Help Works, Web Edition," a product that allowed consumers to use the Internet to screen themselves for benefits, services, and health risks, among other features.  The examiner found that the PMA anticipated certain claims of the application and rendered obvious the remaining claims.  Morsa appealed to the Board. 

On appeal to the Board, Morsa made three main arguments.  First, he argued that the PMA, while dated September 27, 1999, was not prior art because (1) a later publication stated that Help Works, Web Edition launched in 2001; (2) the PMA publishing website stated that it would not be held liable for publication inaccuracies; and (3) a trademark registration for HelpWorks, Web Edition stated that the mark was first used in commerce in 2001.  Second, Morsa argued that the PMA was not enabling because it lacked enough detail to be able to produce or practice the claimed invention based solely on a reading of the PMA, whose two relevant paragraphs totaled only 117 words.  Third, Morsa argued that the differences between the application's claims and the prior art were sufficient to support a finding of nonobviousness.

The Board concluded that the PMA was prior art, that it was presumed enabling because of a lack of evidence to the contrary, and that the examiner's anticipation rejections were proper.  Regarding the examiner's obviousness rejections, the Board found that Morsa failed to present any evidence of objective factors for the Board to consider, and that the differences between the prior art and the claimed invention were not sufficient to overrule the examiner's rejections on certain claims.  However, the Board indicated certain claims as patentable over the PMA.  Following two requests for rehearing, which were subsequently denied by the Board, Morsa appealed.

On appeal, the Federal Circuit affirmed the Board's decision on the PMA being prior art.  Since the PMA was clearly marked with a date of September 27, 1999, the Court concluded that substantial evidence supported the Board's finding on this point.

"The presumption in Antor is a procedural one—designed to put the burden on the applicant in the first instance to challenge cited prior art; the PTO need not come forward with evidence of enablement before it may rely upon a prior art reference as grounds for a rejection.  Once an applicant makes a
non-frivolous argument that cited prior art is not enabling, however, the examiner must address that challenge."  Id. at 9-10 (citing In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)).

Next, the Court turned to the Board's decisions on enablement and anticipation.  In its decision on rehearing, the Board concluded that the PMA was presumed enabling because Morsa failed to provide any affidavits or declarations to support arguments to the contrary.  On appeal, the PTO relied on In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012), which held that publications used as prior art by the PTO are presumed enabling, to support a presumption that the PMA was an enabled reference.  In determining that the Board's presumption was improper, the Court held that "[t]he presumption in Antor is a procedural one—designed to put the burden on the applicant in the first instance to challenge cited prior art."  Slip op. at 9.  But "[o]nce an applicant makes a non-frivolous argument that cited prior art is not enabling, . . . the examiner must address that challenge."  Id. at 10.  The Court also held that, while an applicant must generally do more than state an unsupported belief of lack of enablement, it is not necessarily the case that the applicant must submit affidavits and submissions in support of its arguments.  Since Morsa identified specific, concrete reasons why he believed the PMA was not enabling, the Court held that the Board had erred in not addressing these arguments.

The Court also found unpersuasive the Director's argument that the PMA should be considered enabling because it was "at least as enabling" as Morsa's application.  Id.  On this issue, the Court stated that "an examiner must determine if prior art is enabling by asking whether a person of ordinary skill in the art could make or use the claimed invention without undue experimentation based on the disclosure of that particular document."  Id.  Moreover, the Court held that "the anticipation exercise must assess the enabling nature of a prior art reference in light of the proposed claims."  Id.  The Court concluded that the application far exceeded the level of detail in the PMA and, absent a finding that the application's disclosure was unrelated to the claimed invention, the Court could not agree with the PTO's comparison between the two documents. 

The Court then reviewed the examiner's and the Board's obviousness findings.  During prosecution, the examiner found that it would have been obvious to one of ordinary skill in the art to configure the product described in the PMA to perform the various recitations in the claims.  As to these findings, the Federal Circuit found that they were supported by substantial evidence.  The Court also affirmed the Board's rejection of Morsa's argument that objective factors weighed in favor of a finding of nonobviousness.  The Court explained that, although the case law requires the Board to consider evidence of objective factors in its obviousness determinations, Morsa had merely listed the objective factors without proffering any supporting evidence.  Thus, the Court ruled that the Board did not err in failing to consider evidence of objective factors, since there was no evidence to consider.  Finally, the Federal Circuit reviewed the examiner's factual findings regarding the PMA rendering obvious certain claims of the application, and agreed with the Board's decision that the claims would have been obvious to one of ordinary skill in the art.

Accordingly, the Court affirmed-in-part the Board's ultimate legal conclusions of obviousness.  Based on the improper enablement analysis, however, the Court vacated the Board's anticipation findings and remanded for further proceedings.

Judges:  Rader, Lourie, O'Malley (author)
[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, May, 2013

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