In Re Morsa – A divided panel affirms a Board determination that a prior art reference is enabling, following remand of the case to the Board to decide if the prior art, alleged to anticipate, was enabling. The prior art reference was a news release directed to software that was similar to the claimed software method of linking information about government benefits on a computer. The majority holds that admissions of the inventor in his patent application that the system described in the patent “can be implemented by any programmer of ordinary skill” can be used to prove that the prior art news release is enabling. Judge Newman’s dissent argues that enablement of prior art must come from the prior art, and the majority is using the inventor’s own teaching to enable the news release.
In re: Steve Morsa , Fed. Cir. Case 2015-1107, (October 19, 2015)
In Morsa I, we affirmed the Board’s rejection of certain claims of a utility patent application, as substantial evidence supported the Board’s legal conclusion that the claims were obvious. However, we vacated and remanded as to the Board’s determination that other claims were anticipated because the Board performed an incorrect enablement analysis.
On remand, the Board determined that the PMA reference was enabled, looking to Mr. Morsa’s specification to determine what a person of ordinary skill in this particular field of art would know. The Board found that the specification showed that only “ordinary” computer programming skills were needed to make and use the claimed invention. The PMA disclosure, combined with what a skilled computer artisan would know, rendered the PMA reference enabling and therefore anticipatory of those claims.
Morsa contends that the Board did not conduct a proper enablement analysis regarding the PMA reference. His chief arguments are that the Board improperly erred by taking official notice of various facts and thus generating new grounds of rejection; that the PMA is not enabling because it would have required a person of ordinary skill in the art to conduct undue experimentation; and that the PMA lacks several elements required by the claims. We find none of these arguments persuasive.
The Board properly determined that the PMA reference is enabling. Enablement of prior art requires that the reference teach a skilled artisan—at the time of filing—to make or carry out what it discloses in relation to the claimed invention without undue experimentation. In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). For a prior-art reference to be enabling, it need not enable the claim in its entirety, but instead the reference need only enable a single embodiment of the claim. Schering Corp. v. Geneva Pharm., 339 F.3d 1373 (Fed. Cir. 2003).
We start first with the knowledge that a relevant skilled artisan would have in this case. Here, the Board properly held that the application’s specification made numerous admissions as to what one skilled in the art would have known. We turn next to the PMA reference. There are only four basic claim limitations found in the claims, and each of these limitations can be directly mapped onto the PMA reference. Thus, considering that the PMA reference discloses each claim limitation, and that the application’s specification indicates that a person of ordinary skill in the art is capable of programming the invention, the Board’s conclusion that the PMA reference is enabling is correct.
We disagree with Morsa’s argument some of the statements made by the Board show reversible error as they constitute undesignated new grounds of rejection. Morsa additionally argues that the information provided by PMA is not sufficient to make the claimed invention and thus would require undue experimentation. As discussed above, the specification made clear that a skilled computer artisan would readily know how to use conventional computer equipment and how to program it; thus, only ordinary experimentation would be needed to make the claimed program.
Finally, we do not use portions of the patent specification as prior art, but instead affirm the Board’s use of one section in the specification solely as it relates to the knowledge of a person of ordinary skill in the art. There 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. Morsa, amongst other things, admitted in the specification that the system as described in the patent “can be implemented by any programmer of ordinary skill,” thus allowing him to avoid having to teach the public this very concept. Therefore, by using Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.
JUDGE NEWMAN’S DISSENT
I write to attempt to stabilize the law of “anticipation,” for the court confuses the laws of anticipation and obviousness, and the role of enablement as applied to prior art references.
“Official Notice” is not anticipation
The Board took “Official Notice” that the claim steps missing from the press release must have been performed. However, the law of patent “anticipation” is not so permissive. The law “requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir. 2013). This presence must be found as fact, and when missing elements are stated to be “necessarily present, or inherent, in the single anticipating reference,” Schering Corp. v. Geneva Pharm., 339 F.3d 1373 (Fed. Cir. 2003), “the mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.” Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378 (Fed. Cir. 1999). The Board’s “Official Notice” of the existence of undisclosed steps and claim elements is not an acceptable substitute for examination and citations of prior art and reasoning, in the rigors and high stakes of innovation and patenting.
The applicant’s specification is not prior art
An inventor’s statement in the patent application that a particular step may be performed by procedures known to persons of skill in the field of computer programming does not place that step in the context in which the inventor used it into the prior art.
The issue on remand was not whether Morsa enabled his invention, indeed, that was not challenged by the PTO. However, Morsa’s enablement of his invention does not enable the prior art press release, or fill gaps needed to anticipate the Morsa system. “The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102, however, differs from the enablement standard under section 112” whereby the claimed invention must be enabled by the disclosure in the specification. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005).
Enablement of the prior art must come from prior art
The question on the Morsa I remand was whether the subject matter of the press release is enabled by the description in the press release: “The reference must . . . enable one skilled in the art to make the anticipating subject matter.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558 (Fed. Cir. 1996). My colleagues use the information in the Morsa specification to enable the press release. That is improper. The gaps in the prior art cannot be filled by the invention at issue; it is improper to transfer Morsa’s teachings into the press release in order to enable the press release.
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