Brief summary: Applicant is not required to present affadavits or declarations to support non-enablement arguments relating to anticipation rejections (In re Antor Media Corp. only puts “the burden on the applicant in the first instance to challenge cited prior art”).
Summary: Mr. Morsa appealed BPAI decision that his claims relating to “benefit registration” systems would have been anticipated and obvious in light of the prior art (a press release). The FC found the 35 U.S.C. § 102 enablement analysis to be incorrect (“presumed enabling because Morsa failed to present any evidence to the contrary”) but agreed with the obviousness conclusion. Regarding anticipation, the FC panel pointed out that “a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee” but that, once challenged by the applicant, “‘the Board must “thoroughly revie[w]’ all evidence and applicant argument to determine if the prior art reference is enabling” (citing In re Antor Media Corp., FC 2012). The Board rejected Morsa’s arguments, concluding that argument alone cannot take the place of evidence (citing In re Pearson, CCPA 1974). But the FC panel stated that its “decision in Antor cannot be read to require an applicant to submit affidavits or declarations to challenge the enablement of prior art references” but only “to put the burden on the applicant in the first instance to challenge cited prior art” (“Once an applicant makes a non-frivolous argument that cited prior art is not enabling, however, the examiner must address that challenge…When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance.”) An examiner, the FC panel wrote, “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”. As a proper enablement analysis was not carried out in this case, the anticipation finding relating to two claims was remanded. With respect to obviousness, the Board considered and rejected Morsa’s arguments regarding objective factors because the factors were merely listed without any supporting evidence. The FC panel therefore affirmed the obviousness conclusions.