February 6, 2023

Volume XIII, Number 37

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February 03, 2023

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Prior Art Enablement Looks to Applicant’s Specification to Determine Ordinary Level of Skill: In re Morsa

Addressing the issue of whether an anticipatory prior art reference was enabling, the U.S. Court of Appeals for the Federal Circuit affirmed the judgment of the U.S. Patent Trademark Office (USPTO) Board of Patent Appeals and Interferences (Board) as it pertains to the level of skill in the art standard by which in those cases where a non-frivolous challenge to enablement is raised, enablement of a prior art reference is judged. In re Morsa, Case No. 15-1107 (Fed. Cir., Oct. 19, 2015) (Prost, J.) (Newman, J., dissenting).

In Morsa I (IP Update, Vol. 16, No. 4), the examiner rejected certain claims as being anticipated over a publication reference entitled “Peter Martin Associates Press Release” (PMA). Morsa appealed the examiner’s rejections to the Board and argued that the short PMA press release was not enabling as to the claimed method steps that involved use of a computer network. Following the Board’s affirmation of the examiner, Morsa appealed.

On appeal, the PTO argued that PMA was presumed enabling and that Morsa failed to present evidence to the contrary, such as affidavits or expert declarations. The Federal Circuit disagreed that such evidence is necessary to challenge the enablement of a prior art reference, and that “[w]hen a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance.” Where an applicant raises a “non-frivolous” challenge to enablement of a prior art, the burden shifts to the PTO to determine whether the presumption of enablement has been overcome. Accordingly, the Federal Circuit vacated the finding of the anticipation and remanded the case for the PTO to provide a first instance analysis after Morsa’s substantial rebuttal of the presumption of enablement.

On remand, the Board considered Morsa’s enablement arguments and again determined that one of skill in the computing art would find the PMA was enabling. Morsa again appealed.

The Federal Circuit affirmed, explaining how “[i]n reaching its conclusion the Board looked to Mr. Morsa’s specification to determine what a person of ordinary skill in this particular field of art would know.” The Court explained that “[t]he Board found that the specification showed that only ‘ordinary’ computer programming skills were needed to make and use the claimed invention . . . [and] then determined that the PMA disclosure combined with what a skilled computer artisan would know rendered the PMA reference enabling.” On that basis the Board determined that PMA was anticipatory regarding the pertinent claims.

Morsa argued that the PMA was not enabling since it did not teach “a skilled artisan . . . [how] to make or carry out what it discloses in relation to the claimed invention without undue experimentation.” In dismissing that argument, the Federal Circuit echoed the Board’s use of admissions in the application regarding what one skilled in the art would have known at the time of the invention. Among other admissions, the Board cited how the “system as described in the patent can be implemented by any programmer of ordinary skill in the art using commercially available development tools” and that “search routines for accomplishing this purpose are well within the knowledge of those of ordinary skill in the art.” The Court therefore focused on how the four basic claim limitations, noting each of these limitations can be directly mapped onto the PMA reference.”

In dissent, Judge Newman took issue with the Board’s use of official notice and the majority’s blessing of the Board’s analysis. Newman noted that there was no disclosure in the prior art of recited claim steps, a dilemma solved (by the Board) by taking what it called “Official Notice” of the missing subject matter. Newman observed that, “my colleagues solve this dilemma by finding the missing subject matter in the Morsa specification.”

© 2023 McDermott Will & EmeryNational Law Review, Volume V, Number 334
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About this Author

Associate

Michael J. Stern is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Chicago office.

Michael is experienced in preparing complete patent applications in the mechanical arts for domestic and foreign clients. His practice also includes patent prosecution before the U.S. Patent and Trademark Office (USPTO) and drafting advisory instructions for foreign agents filing with foreign patent offices. Representative technologies include jet turbines, locomotive drive algorithms, lubrication and fuel schedules,...

312-984-7651
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