The Software IP Report

Evidence Not Required to Rebut Presumption That Anticipatory Prior Art Is Enabled

The Federal Circuit has clarified a patent applicant’s burden to rebut the presumption that a prior art reference is enabling of allegedly anticipated claims. In re Morsa, No. 2012-1609 (Fed. Cir. April 5, 2013). The court therefore vacated and remanded a decision from the Board of Patent Appeals and Interferences, where the Board had affirmed a patent examiner’s rejections under 35 U.S.C. § 102. However, the court did affirm the Board with respect to obviousness rejections, under 35 U.S.C. § 103, of numerous of the applicant’s claims.

The rejected claims were generally directed 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 single piece of prior art cited by the examiner was a 127 word press release that disclosed “a state-of-the art software program designed to help maximize the benefits and services that consumers receive from public and private agencies. It can be configured to evaluate any or all benefits and programs required – Federal, State and/or local.” The examiner alleged that various features of the claims were either explicitly or implicitly disclosed in the press release, or would have been obvious.

The patent applicant, Morsa, argued that the prior art press release “was not enabling on its face” and also that it “lacked specific disclosures of the structural components and features of” the prior art software as well as “how these features and components were integrated together, and the process and steps through which the system progressed.” The court noted that

Morsa posed a number of specific and pointed questions regarding the absence of detail in the [prior art], cited to our case law discussing the nature of disclosure required before a reference can be deemed enabling, and pointed out reasons why one could not produce or practice the claimed invention based solely on the reading of the [prior art]. Morsa bolstered his argument by noting that the examiner relied primarily on two paragraphs of the [prior art], totaling only 117 words, to determine what the prior art disclosed.

The Board nonetheless stated that the prior art reference “was presumed enabling because Morsa failed to present any contrary evidence.” However, the court explained that the presumption of enablement could be rebutted with argument alone; evidence is not required. In particular, the recent decision in In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012), “cannot be read to require an applicant to submit affidavits or declarations to challenge the enablement of prior art references.” Antor simply held that “[o]nce an applicant makes a non-frivolous argument that cited prior art is not enabling, . . . the examiner must address that challenge.” While affidavits or declarations could be proffered, “a challenge may be lodged without resort to expert assistance.” In this case, the patent applicant “identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to address these arguments.”

The court also rejected the PTO’s argument that the prior art press release was “at least as enabling” as the applicant’s application. First, this was not the proper inquiry; the prior art should be evaluated to determine if its disclosure is enabling in light of the rejected claims. Second, the present application was in fact significantly more detailed than the prior art.

As stated above, the court did affirm the Board with respect to obviousness rejections. The applicant had merely listed alleged objective factors indicating non-obviousness, and had not provided any evidence. The court held that “[t]he Board did not err in failing to consider evidence of objective factors when there was no evidence to consider.”

The court also rejected the applicant’s argument that the prior art should not be accorded the date on the press release.

Finally, this case presents a dog that did not bark in the night. Apparently, neither the Examiner nor the board raised the question of patent-eligibility under 35 U.S.C. § 101. (Or if any rejections based on an alleged lack of patentable subject matter were made, they were resolved by the time appeal was taken.) One wonders whether the rejected claims, directed to managing benefits information, will receive further Section 101 scrutiny when prosecution resumes on remand.

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