Docket No. 2015-1107
PROST, NEWMAN (D), O’MALLEY
October 19, 2015
Brief Summary: FC panel “affirm[ed] 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” in its determination that a prior art reference was enabled for anticipation purposes.
Summary: This case was previously remanded to the Board for a determination of whether the cited prior art (the PMA disclosure, another person’s press release) was enabled (In re Morsa, FC 2013). The Board determined the reference was enabling, Mr. Morsa disagreed, and appealed. The Board found Morsa’s “specification showed that only ‘ordinary’ computer programming skills were need to make and use the claimed invention” and “the PMA disclosure combined with what a skilled computer artisan would know rendered the PMA enabling and therefoere anticipatory”. The Board’s legal conclusions are reviewed de novo and the factual decisions for substantial evidence; the ultimate conclusion that a reference is or is not enabling is reviewed without deference. The opinion explains that “[f]or 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, FC 2003). The FC panel concluded that the Board properly considered “what one skilled in the art at the time of the invention would have known.” It also found that “each of the [claimed] limitations can be directly mapped onto the PMA reference” and therefore “agree[d] with the Board that the PMA discloses Mr. Morsa’s claims.” Mr. Morsa argued that a statement made by the Board before its enablement analysis constituted a new ground of rejection but the FC found the statement to be “merely descriptive” and “not part of the Board’s enablement analysis [or] necessary to the Board’s conclusions.” The FC panel also disagreed with Mr. Morsa’s argument “that the information provided by PMA is not sufficient to make the claimed invention and thus would require undue experimentation.” The opinion explained that they “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…the Board simply held [Mr. Morsa] to the statements he made in attempting to procure the patent.”) Judge Newman’s dissent argued “[t]he Board recognized that some of the claim steps are not described in the press release” and “solved this dilemma by taking what it called ‘Official Notice’ of the missing subject matter” (“[M]y colleagues solved this dilemma by finding the missing subject matter in the…specificiation [which] states that a person skilled in the art would know how to ‘implement’ the claimed system, that person would have ‘knowledge’ to fill the gaps…it is improper to transfer Mr. Morsa’s teachings into the press release in order to enable the press release.”)