Friday, April 05, 2013

CAFC in In re Morsa discusses In re Antor Media Corp., 689 F.3d 1282 (CAFC 2012)

The CAFC in
In re Morsa
expounded on the prior
enablement case In re Antor Media Corp., 689 F.3d 1282,
1287 (Fed. Cir. 2012).

Enablement is a question of law based on underlying
factual findings. In re Antor Media Corp., 689 F.3d 1282,
1287 (Fed. Cir. 2012). “[A] prior art printed publication
cited by an examiner is presumptively enabling barring
any showing to the contrary by a patent applicant or
patentee.” Id. at 1288. When the applicant challenges
enablement, however, the Board must “thoroughly revie[
w]” all evidence and applicant argument to determine
if the prior art reference is enabling. Id. at 1292. Anticipation
is a question of fact reviewed for substantial evidence.
In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir.
2009). “Obviousness is a question of law based on underlying
factual findings: (1) the scope and content of the
prior art; (2) the differences between the claims and the
prior art; (3) the level of ordinary skill in the art; and (4)
objective considerations of nonobviousness.” In re Cyclo benzaprine
Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063, 1068 (Fed. Cir. 2012) (citing
Graham v. John Deere Co., 383 U.S. 1, 17–18, (1966)),
cert. denied, 133 S. Ct. 933 (2013).


Morsa also contends that a press
release containing only 117 words of disclosure may be
considered non-enabling on its face.

Of the Antor case:

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.
Id. at 1288. Once an applicant makes a non-frivolous
argument that cited prior art is not enabling, however,
the examiner must address that challenge. 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.


First, an examiner must determine if prior art is enabling
by asking whether a person of ordinary skill in the
art could make or use the claimed invention without
undue experimentation based on the disclosure of that
particular document. See 35 U.S.C. § 112. While reference
to the patent application is appropriate for purposes
of determining what the claimed invention is, i.e., what
falls within the scope of the claims, the anticipation
exercise must assess the enabling nature of a prior art
reference in light of the proposed claims. To the extent
the Director argues that a head to head comparison
between the disclosures in the documents is appropriate
moreover, the PTO’s description of the application is
inaccurate. The level of detail and disclosure in the
application far exceeds that in the PMA. Absent a finding
that the application’s disclosures are unrelated to the
invention actually claimed, we cannot agree that the
enabling nature of the two documents the PTO seeks to
compare are, in fact, comparable.

Of secondary considerations:

The Board considered and rejected Morsa’s arguments
that objective factors weighed in favor of finding nonobviousness,
stating that Morsa had failed to provide
evidence of any of the objective factors. Our case law
requires the Board to consider evidence of objective factors
in any obviousness determination.
In re Sernaker,
702 F.2d 989, 996 (Fed. Cir. 1983); see also In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d at 1075. Here, however, Morsa
simply listed various objective factors without any supporting
evidence. The Board did not err in failing to
consider evidence of objective factors when there was no
evidence to consider.


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