CAFC clarifies the presumption that prior art is enabled after In re Antor Media Corp (Fed. Cir. 2012)
Michael Caridi | April 10, 2013
In re Steve Morsa
April 5, 2013
Panel: Rader, Lourie and O’Malley. Opinion by O’Malley.
The Board of Patent Appeals and Interferences (“Board”) had affirmed an Examiner’s finding that a short press release, relied on for an anticipation rejection, was enabling. In making its decision, the Board had held that arguments alone by the applicant were insufficient to rebut the presumption that a reference was enabling. The CAFC found that the Board and the examiner had failed to engage in a proper enablement analysis of the reference and vacated the anticipation finding.
Morsa appealed an anticipation rejection of two claims (the majority of claims had been found obvious which the CAFC upholds) on the basis that the reference found to be anticipating was non-enabling. The main claim found to be anticipated, claim 271 states:
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 anticipating reference was a short press release entitled “Peter Martin Associates Press Release” (“PMA”) announcing the release of “HelpWorks, Web Edition,” which generally described the product as:
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 further relied upon a section of PMA which states:
HelpWorks Web Editions supports both a professionally directed deployment model – in which end users are professional caseworkers, [and] a self service 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.
Morsa had argued that PMA was not enabling on its face and had further argued in detail that 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. He also supported his contention with CAFC case law.
In response to Morsa’s argument the Board maintained the anticipation rejection on the basis that Morsa failed to present any declarations or affidavits to establish the reference as not enabling, citing In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974), (argument alone cannot take the place of evidence). Further, in its decision on Morsa’s appeal, the Board relied on Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003), holding that a patent cited as prior art is presumed enabling, for this same argument. In the brief before the CAFC, the Director, updated this argument to reflect the CAFC holding in In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). In Antor, the CAFC held that publications used as prior art by the PTO are presumed enabling. Id. at 1288. In short, the PTO had given no credence to Morsa’s arguments because of the presumption that a reference is enabling and the lack of any direct evidence to challenge the presumption.
The CAFC clarified that the holding in Antor is a procedural one designed to put the burden on the applicant in the first instance to challenge cited prior art; and that the PTO need not come forward with evidence of enablement before it may rely upon a prior art reference as grounds for a rejection. Id. at 1288. However, the CAFC further clarified that Antor did not stand for a requirement that direct evidence in the form of declarations or affidavits are required for an applicant to rebut the presumption that a reference is enabling. The CAFC states:
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. 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.
The Director further had argued that a head to head comparison between the disclosures in Morsa’s application and PMA was appropriate and such comparison evidenced that PMA was enabling. In short, the Director maintained that the level of disclosure within the two documents were on par with each other. The CAFC responded that while reference to the patent application is appropriate for purposes of determining what the claimed invention is, an anticipation analysis by the examiner must assess the enabling nature of a prior art reference in light of the proposed claims. Further, the CAFC found that the level of detail and disclosure in the application far exceeds that in the PMA, and could not agree that the enabling nature of the two documents the PTO sought to compare were, in fact, comparable.
In light of the above findings, the CAFC vacated the Board’s holding that PMA was presumably enabling to uphold the anticipation rejections and remanded this portion of the appeal for further consideration by the PTO.
The PTO cannot rely upon the presumption that a prior art reference is enabling in face of specific meritorious arguments by an applicant to demonstrate a lack of enablement. This is especially true if the relied upon reference lacks detailed disclosures.
Anticipation analysis by the examiner must assess the enabling nature of a prior art reference in light of the proposed claims (i.e. the examiner cannot use the applicant’s disclosures, aside from the claims, to glean the meaning of the cited reference).