The Software IP Report

Beware: An Enabling Specification Can Also Enable Prior Art

The Federal Circuit has held that a prior art reference was enabled in part because admissions in an applicant’s own specification explained what would have been known to one of ordinary skill in the art.  In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015).  Pointing out knowledge of one skilled in the art can be a valuable tool in avoiding rejections, and generally supporting a disclosure, under 35 U.S.C. 112.  This case, however, is a reminder that relying on the black box of knowledge of persons of ordinary skill can be a double-edged sword.

The court started with a nice reminder of what constitutes enabled prior art:

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. 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.

(Citations omitted.)

It thus follows naturally to “start first with the knowledge that a relevant skilled artisan would have in this case.”  The Federal Circuit agreed with the PTAB “that the application’s specification made numerous admissions as to what one skilled in the art at the time of the invention would have known.”

The reference in question included teachings that mapped directly to the four limitations of the rejected claims.  Based on this fact, 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.” Further, the court rejected the applicant’s contention that application of the reference would have required undue experimentation.  The applicant’s specification admitted 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.”

The court emphasized that it was not sanctioning using the applicant’s specification as prior art, or to fill the gaps in the prior art.  Rather, the PTAB had appropriately used the specification  “solely as it relates to the knowledge of a person of ordinary skill in the art.”  The PTAB had used the applicant’s admissions simply to hold “him to the statements he made in attempting to procure the patent.”

Chief Judge Prost wrote the majority opinion, joined by Judge O’Malley.  Judge Newman dissented, arguing that “the court confuses the laws of anticipation and obviousness, and the role of enablement as applied to prior art references.”  Judge Newman felt, in short, that the majority had improperly transferred teachings form the specification to the prior art.

A clear practice tip falls out of this case: pay close attention to what your specification describes as “known” or “understood” by those skilled in the art.  My own view is that sometimes such statements are important, and I would not urge practitioners to forego them.  However, if you are describing some as known (how to program an algorithm, to take a common example), be sure that it really is.