United States: Drafters Beware: Does Your Specification Enable The Prior Art?

Shortly before Halloween, the Federal Circuit gave patent drafters a (modest) scare.  At issue in In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015), was whether a prior art reference was enabled.  The Federal Circuit agreed with the U.S. Patent and Trademark Office (USPTO) that it was enabled, but its reasoning was supported primarily by statements in the applicant's own specification.  With Halloween now behind us, practitioners should bear the case in mind when drafting applications, but the case is not a horror story.

Morsa involved a patent application directed to managing "benefits," which were described in the specification as "things of value" given away to target entities.  The claims at issue generally involved receiving a benefit information request from a user, searching a benefit information database for benefits matching the request, and returning benefit information to the user.  The claims involved various computer components, such as a "physical memory device" and a "computer compatible network."

In an earlier appeal to the Federal Circuit, the applicant challenged the rejection of certain claims based on a prior art reference titled "Peter Martin Associates Press Release" or "PMA."  Specifically, the applicant argued that its invention antedated PMA and that PMA was not enabled.  The applicant also challenged PMA's teachings on the merits.  Regarding enablement, the Federal Circuit found that, while prior art applied by the Patent Trial and Appeal Board (Board) is generally presumed to be enabled, an applicant may overcome that presumption such that the Board must present evidence of enablement.   In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013).  Because in this case the applicant rebutted the presumption and the Board did not substantively respond, the Federal Circuit vacated and remanded with respect to the affected claims. Id. at 110-11.

On remand, the Board found that PMA was enabled.  According to the Board, only "ordinary" computer programming skills were needed to make and use the claimed invention.  The Board's conclusion was based principally on the applicant's specification, which described what knowledge of computer programming a person of ordinary skill would possess.  According to the Board, the disclosure of PMA combined with that knowledge rendered PMA enabling with respect to the claims at issue.

The applicant once again appealed the Board's rejections.  On appeal, the Federal Circuit affirmed, finding that PMA was properly deemed to be enabled by the Board.  As the Federal Circuit noted, enablement generally requires that a "reference teach a skilled artisan—at the time of filing—to make or carry out what it discloses in relation to the claimed invention without undue experimentation."  Morsa, No. 2015-1107, slip op. at 4.  The court further commented that, "[f]or a prior-art reference to be enabling, it need not enable the claim in its entirety, but instead the reference need only enable a single embodiment of the claim."  Id.  In this case, the Federal Circuit agreed that the application at issue contained several admissions regarding what a person of ordinary skill in the art would have known, including that central processing units and memories were "well known" and could be used for processing requests for benefit information.  Further, the specification admitted that its disclosure could be "implemented by any programmer of ordinary skill in the art using commercially available development tools." Id. (citation omitted).  Primarily due to these admissions, the Federal Circuit agreed with the Board that PMA was enabling vis-à-vis the challenged claims, since only "ordinary" computer programming skills were needed to bridge the gaps between the reference and the claims.

The applicant also argued on appeal that the USPTO improperly made new grounds of rejection.  According to the applicant, the USPTO commented that "database-searching is old and well known and thus the focus on the present application is not on searching databases generally, but on the specific type of data used and the specific searches performed," and these comments formed the basis for new grounds of rejection. Id. at 5.  The Federal Circuit again disagreed, finding that the Board's statements were "merely descriptive" and not part of the USPTO's enablement analysis. Id. at 5-6.

The Federal Circuit also made short shrift of the applicant's argument that PMA would have required "undue experimentation" to implement.  As the Federal Circuit explained, the statements in the application itself demonstrated what knowledge a person of ordinary skill in the art would have possessed, and in view of that knowledge, "only ordinary experimentation would be needed to make the claimed program." Id. at 6.  The court further clarified that it was not using the specification's statements as prior art, but was instead assessing the knowledge that a person of ordinary skill would possess based on those statements.  According to the court, "[t]here is a crucial difference between using the patent's specification for filling in gaps in the prior art, and using it to determine the knowledge of a person of ordinary skill in the art." Id.

Judge Newman issued a dissent, criticizing the majority opinion for confusing issues of anticipation and obviousness, as well as the application of the enablement requirement.  According to Judge Newman, there were undisputed "gaps" between the claim limitations and PMA, which could not be filled by the "knowledge" possessed by a person of ordinary skill or any official notice taken by the USPTO.  She explained that enablement of a prior art reference must come from the reference itself, not from the applicant's specification.

Morsa's application of the enablement requirement for prior art warrants attention by practitioners.  When drafting an application, practitioners inevitably make decisions about the level of detail to include.  Judge Rich's adage that "a patent need not teach, and preferably omits, what is well known in the art," provides some guidance. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986).  Consistent with this principle, practitioners often omit features from patent applications that are deemed too commonplace or too granular when compared to the claimed invention.  Thus, for a patent claim directed to mobile device software, the application need not describe the semiconductor composition of the microprocessor in the mobile device.  Morsa, however, highlights one limitation to the practice of omitting well-known features in a patent application.  In Morsa, an applicant's own statements in its specification about computer programming being "well known" served as admissions that rendered a prior art reference enabling.  Nevertheless, Morsa does not require practitioners to follow an extreme approach of either (1) including all imaginable detail in an application or (2) omitting all acknowledgements of basic prior art teachings.  Adept practitioners should instead recognize that there is a tradeoff: applications need not be encyclopedias of the relevant field of invention, but any inventive concepts not described cannot be claimed.  Practitioners should thus ensure that they fully understand and robustly describe an invention in an application.  Only when this is done can practitioners also decide what material to omit from an application.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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