Affidavits Or Declarations Are Not Always Required When Submitting Arguments Concerning Lack Of Enablement Of Prior Art Reference

In In re Morsa, No. 12-1609 (Fed. Cir. Apr. 5, 2013), the Federal Circuit vacated the Board's enablement and anticipation determinations, affirmed the Board's obviousness conclusions, and remanded to the Board for further proceedings, including an enablement analysis in accordance with the Court's instructions.

On April 12, 2001, Steve Morsa filed a patent application that disclosed a method and apparatus for receiving a benefit information request from a user, searching a benefit information database for benefits matching the user's request, and then returning benefit information to the user. During proceedings before the PTO, the examiner rejected the application as unpatentable over a single reference, Peter Martin Associates Press Release ("PMA"). The PMA is a September 27, 1999, publication that announced the release of "Help Works, Web Edition," a product that allowed consumers to use the Internet to screen themselves for benefits, services, and health risks, among other features. The examiner found that the PMA anticipated certain claims of the application and rendered obvious the remaining claims. Morsa appealed to the Board.

On appeal to the Board, Morsa made three main arguments. First, he argued that the PMA, while dated September 27, 1999, was not prior art because (1) a later publication stated that Help Works, Web Edition launched in 2001; (2) the PMA publishing website stated that it would not be held liable for publication inaccuracies; and (3) a trademark registration for HelpWorks, Web Edition stated that the mark was first used in commerce in 2001. Second, Morsa argued that the PMA was not enabling because it lacked enough detail to be able to produce or practice the claimed invention based solely on a reading of the PMA, whose two relevant paragraphs totaled only 117 words. Third, Morsa argued that the differences between the application's claims and the prior art were sufficient to support a finding of nonobviousness.

The Board concluded that the PMA was prior art, that it was presumed enabling because of a lack of evidence to the contrary, and that the examiner's anticipation rejections were proper. Regarding the examiner's obviousness rejections, the Board found that Morsa failed to present any evidence of objective factors for the Board to consider, and that the differences between the prior art and the claimed invention were not sufficient to overrule the examiner's rejections on certain claims. However, the Board...