Addressing the issue of whether an anticipatory prior art reference was enabled during prosecution, the U.S. Court of Appeals for the Federal Circuit vacated part of a decision by the U.S. Patent Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) that found that applicant had failed to rebut the presumption that prior art references are enabled, finding that affidavits or declarations are not required to challenge the enablement of the prior art reference.  In re Morsa, Case No. 12-1609 (Fed. Cir., Apr. 5, 2013) (O’Malley, J.).

Morsa filed an application directed to the furnishing of benefits information and benefits.  The examiner rejected the claims being anticipated over a publication entitled “Peter Martin Associates Press Release” (PMA).  PMA related to a new product that allows users to “use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.”  Pointing to two paragraphs of PMA, the examiner rejected some of Morsa’s claims as being anticipated.  Morsa ultimately appealed the examiner’s rejections to the Board challenging, among other things, whether the PMA reference was enabling.  Specifically, Morsa argued that PMA was not enabling on its face and that the PMA lacked specific disclosures of structural elements and their association to enable users to “use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.”  After the Board affirmed the examiner, Morsa appealed.

On appeal, PTO citing to the 2012 Federal Circuit decision in In re Antor Media Corp. (IP Update, Vol. 15, No. 8) argued that PMA was presumed enabling and Morsa failed to show any evidence to the contrary such as affidavits and/or expert declarations.  The Federal Circuit disagreed that such evidence is necessary to challenge the enablement of a prior art reference.  The Court explained that the presumption is simply procedural.  As such, it is designed to place the burden or persuasion on the applicant in the first instance and does not mandate that when the applicant makes a non-frivolous argument that the cited reference is not enabling the presumption is rebutted.  In this situation, the burden then shifts to the PTO to show that the cited reference is indeed enabling.  The Court further explained that a non-frivolous argument does not require affidavits or declarations, although such submissions may be useful to show lack of enablement of prior art.  The Court explained that “[w]hen a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance.”

Accordingly, the Federal Circuit vacated the finding of the anticipation since both the examiner and the Board failed to engage in a proper enablement analysis after Morsa provided a substantial rebuttal of the presumption of enablement.