Federal Circuit Review - Volume 3 | Issue 5 - May 2013


In This Issue:

• Patent Office Must Prove Prior Art Reference Is Enabling

• Complaint Was Adequate Despite Non-Infringing Possibilities

• FDA Approval Not Relevant to Obviousness Analysis

- Excerpt from Patent Office Must Prove Prior Art Reference Is Enabling:

In In Re Steve Morsa, Appeal No. 12-1609, the Federal Circuit affirmed the Board’s rejection of certain claims as obvious, vacated the Board’s rejection of certain claims as anticipated, and remanded for a proper enablement analysis.

Morsa filed several hundred claims directed to a benefits information database, two of which were rejected as anticipated by a short press release that announced the launch of an Internet-based benefit database product. Morsa appealed the anticipation rejection to the Board, arguing that the press release was not an enabling disclosure. The Board sustained the rejection and subsequently denied two requests for a rehearing on the issue of anticipation...

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