The dissent of Judge Newman in In re Morsa: the majority decision was precedent defying
Judge Newman's dissent
I write to attempt to stabilize the law of “anticipation,”
for the court confuses the laws of anticipation and
obviousness, and the role of enablement as applied to
prior art references.
“Anticipation” in patent law means that the claimed
subject matter is not new; that is, that it was already
known. To “anticipate” in patent law requires that a
single reference contains all of the elements and limitations
of the claim at issue, explicitly or inherently. If the
single reference is not enabled with respect to the subject
matter under examination, “anticipation” cannot be
found; it is not permissible to go outside the single reference
in order to find “anticipation,” unlike the protocols by
which references are combined to show “obviousness.”
These simple rules have provided the foundation for
examination of patentability; they have been explored and
refined and applied without challenge to their foundation.
This distinction between sections 102 and 103 of the
Patent Act should not now be blurred. This court should
not ratify the shortcut the PTO Board took here. From
this and other errors and imprecision, I respectfully
PTAB's statement incomprehensible?
The Board’s statement that Mr. Morsa waived the issue
of anticipation before the Board is not comprehensible,
for Mr. Morsa’s appeal brief to the Board states:
Independent claims 271-272 and 181, 203, 225,
and 247 are neither anticipated nor rendered obvious
by the alleged PMA . . . .
Board Brief 12 (emphasis in original). In re Morsa, 713
F.3d 104 (Fed. Cir. 2013) (Morsa I) included the issue of
anticipation; that was the sole issue on remand, and now
the subject of this appeal.
Of anticipation by a press release:
Claims 271 and 272 had been rejected by the Board on
the ground of “anticipation” by a third person’s press
release. The press release was short on detail, and in
Morsa I this court remanded for a determination of
whether the disclosure in the press release was enabled.
On remand, the Board reaffirmed its rejection for anticipation,
and Mr. Morsa again appeals.
The claims demonstrate the issue, for the press release
does not mention all of the steps and limitations of
The Board recognized that some of the claim steps are not
described in the press release. The Board solved this
dilemma by taking what it called “Official Notice” of the
missing subject matter. And my colleagues solve this
dilemma by finding the missing subject matter in the
Morsa specification by stating that since the specification
states that a person skilled in the art would know how to
“implement” the claimed system, that person would have
“knowledge” to fill the gaps in the prior art. However, we
are directed to no disclosure in the prior art of all the
claim elements and steps. “Anticipation” is not established
in accordance with law.
“Official Notice” is not anticipation
The Board took “Official Notice” that the claim steps
missing from the press release must have been performed.
However, the law of patent “anticipation” is not so permissive.
The law “requires the presence in a single prior
art disclosure of all elements of a claimed invention
arranged as in the claim.” SynQor, Inc. v. Artesyn Technologies,
Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). This
presence must be found as fact, and when missing elements
are stated to be “necessarily present, or inherent,
in the single anticipating reference,” Schering Corp. v.
Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003), “the
mere fact that a certain thing may result from a given set
of circumstances is not sufficient to establish inherency.”
Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384
(Fed. Cir. 1999).
The Board’s “Official Notice” of the existence of undisclosed
steps and claim elements is not an acceptable
substitute for examination and citations of prior art and
reasoning, in the rigors and high stakes of innovation and
patenting. The Board failed, for example, to show that
the undisclosed features were inherently present in the
database referred to in the cited press release. Instead,
the Board took “Official Notice” of how “databases” function
without showing that the database in the press
release necessarily was the same as the database in the
Morsa claims or even the same as “databases” generally.
This is insufficient to establish either inherent description
or inherent enablement of the explicitly claimed subject
The majority compounds the Board’s error by rewriting
the claims to match the reference. Maj. Op. at 5. The
press release does not say how the system operates, only
the final result. The Board called it “Official Notice” of
how databases work. Such an assumptio
Can what an inventor says in the specification come back
to hurt the inventor?
An inventor’s statement in the patent application that
a particular step may be performed by procedures known
to persons of skill in the field of computer programming
does not place that step in the context in which the inventor
used it into the prior art.
The panel majority fills the gaps in the press release
by referring to Morsa’s statement that various steps of his
invention may be conducted by procedures known to
persons of skill in computer-implemented methods. The
issue on remand was not whether Morsa enabled his
invention, indeed, that was not challenged by the PTO.
However, Morsa’s enablement of his invention does not
enable the prior art press release, or fill gaps needed to
anticipate the Morsa system. “The standard for what
constitutes proper enablement of a prior art reference for
purposes of anticipation under section 102, however,
differs from the enablement standard under section 112”
whereby the claimed invention must be enabled by the
disclosure in the specification. Rasmusson v. SmithKline
Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005).
Can the inventor's specification enable prior art?
“[A] patent claim ‘cannot be anticipated by a prior art
reference if the allegedly anticipatory disclosures cited as
prior art are not enabled.’” Verizon Servs. Corp. v. Cox
Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010)
(quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1354 (Fed. Cir. 2003)).
The question on the Morsa I remand was whether the
subject matter of the press release is enabled by the
description in the press release: “[The] reference must . . .
enable one skilled in the art to make the anticipating
subject matter.” PPG Indus., Inc. v. Guardian Indus.
Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996). My colleagues
use the information in the Morsa specification to enable
the press release. That is improper. The gaps in the prior
art cannot be filled by the invention at issue; it is improper
to transfer Mr. Morsa’s teachings into the press release
in order to enable the press release.
These flaws confound the laws of anticipation and obviousness
and enablement, defying precedent, and adding
to the complexities of patenting. The issues should be
decided on the correct law. Thus I respectfully dissent.
The majority deemed statements in the specification to
Here, the Board
properly held that the application’s specification made
numerous admissions as to what one skilled in the art at
the time of the invention would have known. For example,
the Board found that the specification discussed that
central processing units and memories were “well known
to those skilled in the art,” that central processing units
and memories were “used in conventional ways to process
requests for benefit information in accordance with stored
instructions,” that the system as described in the patent
“can be implemented by any programmer of ordinary skill
in the art using commercially available development tools
. . . ,” and that “search routines for accomplishing this
purpose are well within the knowledge of those of ordinary
skill in the art.” Appellee’s App. 38, 40.
AND the majority noted
Mr. Morsa additionally argues that the information
provided by PMA is not sufficient to make the claimed
invention and thus would require undue experimentation.
We disagree. As discussed above, the specification made
clear that a skilled computer artisan would readily know
how to use conventional computer equipment and how to
program it; thus, only ordinary experimentation would be
needed to make the claimed program.
Finally, we do not use portions of the patent specification
as prior art, but instead affirm the Board’s use of one
section in the specification solely as it relates to the
knowledge of a person of ordinary skill in the art. There
is a crucial difference between using the patent’s specification
for filling in gaps in the prior art, and using it to
determine the knowledge of a person of ordinary skill in
the art. Here, the Board did only the latter. Mr. Morsa,
amongst other things, admitted in the specification that
the system as described in the patent “can be implemented
by any programmer of ordinary skill . . . ,” thus allowing
him to avoid having to teach the public this very
concept. Therefore, by using Mr. Morsa’s admissions, the
Board simply held him to the statements he made in
attempting to procure the patent.
Descriptive arguments are not new arguments:
Mr. Morsa’s principal argument is that the statements
made by the Board appearing before the enablement
analysis show reversible error as they constitute
undesignated new grounds of rejection. We disagree.
These statements—such as the statement that databasesearching
is old and well known and thus the focus on the
present application is not on searching databases generally,
but on the specific type of data used and the specific
searches performed—were merely descriptive.
One commenter at PatentlyO wrote:
I do feel as if Judge Newman’s understanding of how computer-implementers game the system has improved slightly over the years but she spectactularly misses the boat here. She’s plainly suffering from a bad case of “I Was Born Yesterday” syndrome, that a devastating illness that afflicts susceptible individuals whenever they see “computers” mentioned in a patent claim.
my colleagues solve this dilemma by finding the missing subject matter in the Morsa specification by stating that since the specification states that a person skilled in the art would know how to “implement” the claimed system, that person would have “knowledge” to fill the gaps in the prior art.
That’s 100% correct. When the claim describes a pear butter and quince jam sandwich and the applicant’s specification teaches (and nobody disputes) that “making and eating butter and jam sandwiches is popular and easy for the whole family”, the PTO doesn’t need to find a reference that expressly teaches you how to open a cupboard. The PTO also doesn’t need to find a reference that teaches you how get out of bed and put your clothes on. The PTO doesn’t need to find a reference that teaches you how to open up a cupboard. The PTO doesn’t need to find a reference that teaches you how to open the refrigerator door. The PTO doesn’t need to find a reference that teaches how to identify the jar you’re looking for and pick it up off the shelf. The PTO doesn’t need to find a reference that teaches how to move the jar from the shelf to the counter. The PTO doesn’t to need a reference that expressly teaches you how to open a jar. The PTO doesn’t need to find a reference teaching how to find a loaf of bread and identify whether it needs slicing, or how to slice it. The PTO doesn’t need to find a reference that teaches putting butter or jam on a knife and spreading it onto slices bread without destroying bread. The PTO doesn’t need to find a reference telling you how to put the slices of bread together to make a sandwich.