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].”