Challenging the Enabling Quality of Prior Art

18 April 2013 PharmaPatents Blog

In In re Morsa, the Federal Circuit reversed an anticipation rejection where the applicant had challenged the enabling quality of the cited prior art reference, even though the applicant had not submitted evidence in support of its position. While the court agreed with the USPTO that a prior art reference is presumptively enabled, it held that an applicant need not always bring forth evidence of non-enablement in order to shift the burden to the USPTO. This decision may make it easier to challenge the enabling quality of prior art, but pursuing an appeal without developing a supporting factual record still can be risky.

The Patent Application at Issue

The patent application at issue is Morsa’s U.S. patent application 09/832,440, directed to “Method and Apparatus for the Furnishing of Benefits Information and Benefits.” (For some reason, the Federal Circuit decision refers to the provisional patent application number, 60/211,228.) Claim 271 recites:

A benefit information match mechanism comprising:
storing a plurality of benefit registrations on at least one physical memory device;
receiving via at least one data transmission device a benefit request from a benefit desiring seeker;
resolving said benefit request against said benefit registrations to determine one or more matching said benefit registrations;
automatically providing to at least one data receiving device benefit results for said benefit requesting seeker;
wherein said match mechanism is operated at least in part via a computer compatible network.

The Prior Art at Issue

Claims 271 and 272 were rejected as anticipated by the “Peter Martin Associates Press Release,” which “announced the release of ‘HelpWorks, Web Edition,’ a new product that allows caseworkers and consumers to ‘use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.’”

[Helpworks, Web Edition is] 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.
*****
HelpWorks Web Editions supports both a professionally directed deployment model – in which end users are professional caseworkers, [and] a selfservice model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.

The power behind this unprecedented flexibility in application and access is PMA’s newly released Expert Eligibility Server (EES) technology. The EES engine allows an agency to utilize HelpWorks – Web Edition as well as other applications that will leverage this dynamic technology. With EES as the backbone, agencies can rapidly deploy eligibility solutions for touch-screen kiosks, interactive voice response systems, the Web and many other platforms.

The Enablement Challenge

Morsa asserted that the PMA did not enable the methods of the rejected claims. As summarized in the Federal Circuit decision, Morsa argued that “the PMA lacked specific disclosures of the structural components and features of Helpworks, Web Edition, 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 PMA, 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 PMA.”

The Board rejected Morsa’s arguments because a prior art reference is “presumed enabling” and “Morsa failed to present any contrary evidence.”

The Federal Circuit Decision

The Federal Circuit noted that “[e]nablement is a question of law based on underlying factual findings, and cited its 2012 decision in In re Antor Media Corp., for the proposition 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.” However, the court noted that Antor also provided that “[w]hen the applicant challenges enablement, … the Board must ‘thoroughly revie[w]’ all evidence and applicant argument to determine if the prior art reference is enabling.

The court explained its decision in Antor as follows:

In Antor, we held that publications used as prior art by the PTO are presumed enabling. … Although the court ultimately found Antor’s argument to be without merit, our decision in Antor cannot be read to require an applicant to submit affidavits or declarations to challenge the enablement of prior art references.

The presumption in Antor is a procedural one—designed to put the burden on the applicant in the first instance to challenge cited prior art; the PTO need not come forward with evidence of enablement before it may rely upon a prior art reference as grounds for a rejection. … Once an applicant makes a non-frivolous argument that cited prior art is not enabling, however, the examiner must address that challenge.

The court explained further:

While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and may proffer affidavits or declarations in support of his position, we see no reason to require such submissions in all cases. When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance.

Turning to the case before it, the court noted:

Here, Morsa 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.

Because “both the Board and the examiner failed to engage in a proper enablement analysis,” the Federal Circuit vacated the anticipation rejection and remanded the case to the USPTO for further proceedings.

Attorney Argument Versus Evidence

Without reviewing the prosecution history of Morsa’s application, I can imagine how Morsa might have found himself in the position of appealing the anticipation to the Board without having submitted any evidence in support of his position.

  • The Examiner rejected Morsa’s claims based on a press release.
  • Morsa believed that the press release was non-enabling on its face, and argued against the rejection.
  • The Examiner maintained the rejection in a final Office Action, without addressing Morsa’s detailed arguments.
  • Morsa was faced with two options: (1) file a Request for Continued Examination in order to be able to present a declaration attesting to the non-enabling quality of the press release or (2) appeal to the Board because the reference is non-enabling on its face.

While it can be risky to pursue an appeal without fully developing a record in support of your position, the Federal Circuit decision in Morsa indicates that sometimes common sense can prevail.

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