CAFC Says Prior Art Reference Sufficiently Enabled Based on Applicant Admissions

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Federal Circuit Review No. 73.1
Federal Circuit Affirms Enablement of Prior Art Reference Via Admissions in Applicant’s Own Specification

In re: Steve Morsa, No. 2015-1107, 2015 U.S. App. LEXIS 18042 (Fed. Cir. Oct. 19, 2015) (Before Prost, Newman, and O’Malley, J.) (Opinion for the court, Prost, CJ.).  Click Here for a copy of the opinion.

In a 2-1 decision, the Federal Circuit affirmed a PTAB decision finding that a prior art reference was sufficiently enabled and could therefore qualify as an anticipating reference to a software patent application.  In the original appeal from the Board’s decision, In re Morsa, No. 12-1609 (Fed. Cir. Apr. 5, 2013) (Morsa I), the Federal Circuit affirmed the Board’s rejection of certain claims on obviousness grounds but vacated and remanded for a determination whether two other claims were anticipated.  The Court found that the Board performed an incorrect enablement analysis in reaching its decision on anticipation.  Specifically, during patent prosecution, prior art is presumed to be enabling unless challenged by the applicant.  In Morsa I, the Court found that the applicant directly challenged enablement, but the PTO failed to address the applicant’s arguments.

On remand, the Board reviewed the patent specification to determine what a person of ordinary skill in this particular field would know.  The Board made a specific finding that the specification showed that only “ordinary” computer programming skills were needed to make and use the claimed invention.  The Board then determined that the disclosure in the prior art reference combined with the knowledge of a person of skill rendered the reference enabling and thus anticipatory.

On appeal from this decision, the Court set forth the test for enablement, which requires the reference to teach a person of ordinary skill, at the time of filing, to make or carry out the invention without undue experimentation. As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of the invention.  For example, the specification stated that different elements of the invention were “within the knowledge of those of ordinary skill in the art,” and that the alleged invention “can be implemented by any programmer of ordinary skill.” Thus, a person of skill would have known how to implement the prior art reference at issue.  The Court then confirmed that each element of the claims at issue could be found within that reference.

The Court acknowledged that “[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. Here, the Board did only the latter.”  However, Judge Newman wrote in dissent that enablement of prior art must also come from the prior art, and that the majority improperly used information from the specification of the patent at issue to find that a prior art reference was enabling.  Judge Newman maintained that “[t]he gaps in the prior art cannot be filled by the invention at issue; it is improper to transfer Mr. Morsa’s teachings into the [prior art reference] in order to enable the [prior art reference].”


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Join the Discussion

5 comments so far.

  • [Avatar for Anon]
    November 5, 2015 03:18 pm


    Your “logic” while on the surface seems sound, simply need not be applied.

    Bottom line here (and quite simply), the applicant’s admission works against him – it simply does not matter if the applicant’s admission is “true.” Any number of “untruths” if stated by the applicant become “true” for that applicant as pertains to abilities/circumstance/”facts” in the prior art.

    This is just not that interesting of a matter.

  • [Avatar for Ely Erlich]
    Ely Erlich
    November 5, 2015 04:14 am

    Regarding your comment “you just can’t pretend that prior art is enabled when it isn’t.”, my understanding of this case, from reading this article only is:
    1. The court doesn’t know if the prior art is enabled.
    2. To attack the prior art, the applicant said it isn’t enabled because of a lack of enabling knowledge.
    3. But to get his own application, the applicant originally said that enabling knowledge was known in the art before the filing of his own application, so he doesn’t need to explain it in his own application. ” As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of the invention. ”

    You can’t have your cake and eat it to, either the prior art is enabled or your own application relying on the same general knowledge isn’t, either way… it seems the court made a logical decision here.

  • [Avatar for David Stein]
    David Stein
    November 3, 2015 04:04 pm

    Hmm. It’s difficult to evaluate this holding without being able to look at the application.

    In this instance, the article above doesn’t identify the application. And the PTAB opinion identifies it as 60/211228, which can’t be correct because applications with serial numbers starting with 6 are provisionals that aren’t examined at all (let alone taken to the PTAB!)

    The actual application under review is the nonprovisional conversion of the provisional: serial no. 09/832,440, also published as 20030093283.

    Joseph and Robert: Thank you for providing this article. For future articles about a particular patent or application, would you please try to include a serial number? Preferably in the header or first paragraph of the article?

  • [Avatar for Anon]
    October 30, 2015 04:57 pm


    This has more to do with an admission against interests in a legal document.

    The veracity of a statement made by an applicant simply has no regard to that statement being used against the applicant.

    IF you want to talk about legal documents (of which, a patent application is), then your “Period” becomes necessarily false in certain contexts.

    I do note that this may be different for a non-statement enabling of some other art not in the application.

  • [Avatar for Ken]
    October 30, 2015 03:16 pm

    This is bizarre. What the prior art contains or not has nothing to do with what the inventor says/does, period. Maybe one could make some sort of estoppel or presumption argument (or perhaps even invalidate the patent on enablement grounds, if warranted), but you just can’t pretend that prior art is enabled when it isn’t.