Affidavits or Declarations are not Required to Challenge Enablement of Prior Art: Federal Circuit | Practical Law

Affidavits or Declarations are not Required to Challenge Enablement of Prior Art: Federal Circuit | Practical Law

In In re: Morsa, the US Court of Appeals for the Federal Circuit clarified that the holding in In re: Antor Media Corp. does not require a patent applicant to submit affidavits or declarations when challenging the enablement of prior art references.

Affidavits or Declarations are not Required to Challenge Enablement of Prior Art: Federal Circuit

by PLC Intellectual Property & Technology
Published on 08 Apr 2013 • USA (National/Federal)
In In re: Morsa, the US Court of Appeals for the Federal Circuit clarified that the holding in In re: Antor Media Corp. does not require a patent applicant to submit affidavits or declarations when challenging the enablement of prior art references.
On April 5, 2013, in In re: Morsa, the US Court of Appeals for the Federal Circuit issued an opinion affirming in part, and reversing in part, the USPTO Board of Patent Appeals and Interferences' (BPAI) rejection of certain claims of Morsa's patent application.
In 2001, Morsa submitted a patent application which disclosed a method and an apparatus for receiving a benefit information request from a user, searching a benefit information database for benefits matching the request, and returning the benefit information to the user. The examiner rejected various claims in the application as unpatentable based on a press release announcing a software which allowed caseworkers and consumers to use the internet to search for social service information including:
  • Benefit information.
  • Agency services.
  • Health risk information.
  • Anything else an agency may decide to add to its eligibility database.
The examiner concluded that this press release, which was published in 1999, was prior art which disclosed a system that comprised:
  • A means for storing benefit information and benefit related information.
  • A means for using an individual's data to search for available benefits.
  • A means for generating a message informing the individual of the applicable benefits.
The examiner rejected:
  • Certain claims based on a finding that they were anticipated by the prior art.
  • Other claims based on obviousness.
On appeal, the BPAI sustained the examiner's rejection, concluding that:
  • On the question of anticipation, the press release was published before Morsa's application and was presumed enabling because Morsa failed to present any evidence to the contrary.
  • On the question of obviousness, Morsa failed to present any evidence of objective factors for the BPAI to consider.
The Federal Circuit reviewed the BPAI's conclusions de novo, specifically:
  • The publication date of the prior art.
  • Enablement of the prior art.
  • Obviousness.

Publication Date of the Prior Art

Despite Morsa's arguments that the press release was published after the date of his application, including other publications which indicate a different publication date, the Court found that the press release was clearly dated September 27, 1999, and was substantial evidence that the press release was published before Morsa's 2001 application.

Enablement and Anticipation

Next, the Court turned to Morsa's claims that the press release was not enabling. Among other things, Morsa argued that the press release cannot be enabling as it contained only 117 words of disclosure and lacked the specific steps that the software uses to match benefits to users. The BPAI's rejection of Morsa's arguments was based on the fact that Morsa did not present any declarations or affidavits to establish that the press release was not enabling. The Court noted that in In re Antor Media Corp., it held that publications used as prior art by the USPTO were presumed enabling, but clarified here that Antor could not be read to require an applicant to submit affidavits or declarations to challenge the enablement of a prior art reference. Here, Morsa had specific, concrete reasons as to why he believed the press release was not enabling, and both the examiner and the BPAI erred by not addressing the applicant's arguments. For more information on In re: Antor Media Corp., see Legal Update, Federal Circuit Finds Prior Art Printed Publications Presumptively Enabling.
In considering the enablement of the press release, the Court also rejected the BPAI's argument that the press release was at least as enabling as Morsa's application because the level of detail and disclosure in the application far exceeds that in the press release.
Because neither the examiner nor the BPAI engaged in a proper enablement analysis, the Court vacated the finding of anticipation and remanded Morsa's application for further proceedings.

Obviousness

Lastly, the Court affirmed the BPAI's determination that certain of Morsa's patent claims were obvious in light of the press release as prior art.

Court Documents