Patent Watch: In Re Morsa

by BakerHostetler

"[For purposes of an anticipation inquiry, when] a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance."

On April 5, 2013, in In re Morsa, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie, O'Malley*) affirmed-in-part, vacated-in-part and remanded the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection of the claims of U.S. patent application Serial No. 60/211,228, which related to receiving a benefit information request from a user, searching a benefit information database for benefits matching the request, and then returning benefit information to the user. The Federal Circuit stated:

Enablement is a question of law based on underlying factual findings. "[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee." When the applicant challenges enablement, however, the Board must "thoroughly revie[w]" all evidence and applicant argument to determine if the prior art reference is enabling. Anticipation is a question of fact reviewed for substantial evidence. "Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness."

[P]ublications used as prior art by the PTO are presumed enabling. . . . The presumption [is] a procedural one -- designed to put the burden on the applicant in the first instance to challenge cited prior art; the PTO need not come forward with evidence of enablement before it may rely upon a prior art reference as grounds for a rejection. Once an applicant makes a nonfrivolous argument that cited prior art is not enabling, however, the examiner must address that challenge. While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and may proffer affidavits or declarations in support of his position, we see no reason to require such submissions in all cases. When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance. Here, Morsa identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to ad dress these arguments.

Despite the less than illuminating nature of the [prior art publication Peter Martin Associates Press Release (PMA)], the Director also argues that the court should consider the PMA enabling because it is "at least as enabling" as Morsa's application. We are not persuaded. First, an examiner must determine if prior art is enabling by asking whether a person of ordinary skill in the art could make or use the claimed invention without undue experimentation based on the disclosure of that particular document. While reference to the patent application is appropriate for purposes of determining what the claimed invention is, i.e., what falls within the scope of the claims, the anticipation exercise must assess the enabling nature of a prior art reference in light of the proposed claims. To the extent the Director argues that a head to head comparison between the disclosures in the documents is appropriate moreover, the PTO's description of the application is inaccurate. The level of detail and disclosure in the application far exceeds that in the PMA. Absent a finding that the application's disclosures are unrelated to the invention actually claimed, we cannot agree that the enabling nature of the two documents the PTO seeks to compare are, in fact, comparable.

Over the course of the prosecution history, the examiner and the Board made factual findings concerning the scope and content of the prior art, the differences between the prior art and the claims, and what one of skill in the art would understand from the disclosure in the prior art. Accordingly, we consider the Board's factual findings with deference and review the Board's legal conclusions of obviousness de novo.

In considering the PMA, the examiner made multiple factual findings relevant to our obviousness inquiry. Specifically, the examiner found that the PMA disclosed that HelpWorks, Web Edition is a configurable screening tool that searches for benefits that match user entered criteria. The examiner also found that one of ordinary skill in the art would have found it obvious to configure HelpWorks, Web Edition to use any kind of user data necessary to correctly match users to the benefits in the system's benefit library. The examiner further noted that the PMA discloses "an eligibility-screening tool based on entered criteria, and the amount of criteria entered would obviously equate to varying amounts of system matches (well-known function of database correlation systems)." The examiner concluded that HelpWorks, Web Edition must have stored data, as data storage is inherent to internet operations, and thus one of ordinary skill would use that stored data to search. While the examiner found no disclosure in the PMA relating to a method of paying for services, the examiner determined that the PMA disclosed that HelpWorks, Web Edition was available to the public and that "Official Notice is taken that charging for services provided to users was a well-known form of business at the time the invention was made." Based on our review of the PMA reference, we find that these factual findings are supported by substantial evidence. . . .

We find the Board's factual determinations to be supported by substantial evidence, and we agree with its ultimate legal conclusions of obviousness. The Board, however, failed to engage in a proper enablement analysis. The Board's rejection of the various claims is therefore affirmed in part, vacated in part, and remanded.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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