In Re: Morsa , 803 F.3d 1374 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STEVE MORSA,
Appellant
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2015-1107
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 09/832,440.
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Decided: October 19, 2015
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STEVE MORSA, Thousand Oaks, CA, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, JOSEPH GERARD PICCOLO, COKE STEWART.
______________________
Before PROST, Chief Judge, NEWMAN and O’MALLEY,
Circuit Judges.
Opinion for the court filed by Chief Judge PROST.
Dissenting opinion filed by Circuit Judge NEWMAN.
PROST, Chief Judge.
This case presents the second time that this court re-
views whether a publication entitled Peter Martin Associ-
ates Press Release, dated September 27, 1999 (“PMA”),
2 IN RE: MORSA
anticipates the claimed invention. 1 In the original case,
we remanded the claims to the United States Patent and
Trademark Office, Patent Trial and Appeal Board
(“Board”) for the Board to consider Mr. Morsa’s argu-
ments concerning the enablement of the PMA reference.
In re Morsa, 713 F.3d 104, 112 (Fed. Cir. 2013) (“Morsa
I”). On remand, the Board determined that the reference
was enabling. Appellant’s Informal Br. App. 7. Mr.
Morsa argues that the reference was not enabling. See
generally Appellant’s Informal Br. We disagree with Mr.
Morsa and therefore affirm.
BACKGROUND
Morsa I provides detailed background information re-
garding this case, and thus we will only briefly set forth
the relevant background information here. Morsa I, at
106. In Morsa I, we affirmed the Board’s rejection of
claims 181, 184, 188-203, 206, 210-25, 228, 232-47, 250,
and 254-68 of utility patent application No. 60/211228, as
substantial evidence supported the Board’s ultimate legal
conclusion that the claims were obvious in light of the
prior art. Id. However, we vacated and remanded as to
the Board’s determination that claims 271 2 and 272 were
1 This case was submitted on the briefs.
2 Claim 271 is representative and reads:
A benefit information match mechanism compris-
ing:
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;
IN RE: MORSA 3
anticipated because the Board performed an incorrect
enablement analysis. Id.
On remand, the Board determined that the anticipat-
ing reference, PMA, was enabled. In reaching its conclu-
sion the Board looked to Mr. Morsa’s specification to
determine what a person of ordinary skill in this particu-
lar field of art would know. The Board found that the
specification showed that only “ordinary” computer pro-
gramming skills were needed to make and use the
claimed invention. The Board then determined that the
PMA disclosure combined with what a skilled computer
artisan would know rendered the PMA reference enabling
and therefore anticipatory of claims 271 and 272.
DISCUSSION
We review the Board’s legal conclusions de novo and
the Board’s factual decisions for substantial evidence. In
re DBC, 545 F.3d 1373, 1377 (Fed. Cir. 2008). Whether a
prior art reference is enabling is a question of law based
on underlying factual findings. Impax Labs., Inc. v.
Aventis Pharm., Inc., 545 F.3d 1312, 1315 (Fed. Cir.
2008). Thus, this court reviews the Board’s ultimate
conclusion that a reference is or is not enabling without
deference. Id.
Mr. Morsa contends that the Board did not conduct a
proper enablement analysis regarding the PMA reference.
His chief arguments are that the Board improperly erred
by taking official notice in its enablement analysis of
various facts and thus generating new grounds of rejec-
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 net-
work.
4 IN RE: MORSA
tion; that the PMA is not enabling because it would have
required a person of ordinary skill in the art to conduct
undue experimentation; and that the PMA lacks several
elements required by the claims. We find none of these
arguments persuasive.
The Board properly determined that the PMA refer-
ence is enabling. Enablement of prior art requires that
the reference teach a skilled artisan—at the time of
filing—to make or carry out what it discloses in relation
to the claimed invention without undue experimentation.
In re Antor Media Corp., 689 F.3d 1282, 1289-90 (Fed.
Cir. 2012). For a prior-art reference to be enabling, it
need not enable the claim in its entirety, but instead the
reference need only enable a single embodiment of the
claim. Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
1381 (Fed. Cir. 2003).
We start first with the knowledge that a relevant
skilled artisan would have in this case. 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 exam-
ple, 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 ordi-
nary skill in the art.” Appellee’s App. 38, 40.
We turn next to the piece of prior art that the exam-
iner and the Board found to be anticipatory, PMA. There
are only four basic claim limitations found in claims 271
and 272; each of these limitations can be directly mapped
IN RE: MORSA 5
onto the PMA reference. First, the claims require the
storage of benefit information. Id. at 48-49. Likewise, the
PMA reference describes the storage of “benefits and
services that consumers receive from public and private
agencies” along with the storage of “benefits services,
health risks, or anything else an agency wishes to imple-
ment via its eligibility library.” Id. at 26-27. Second, the
claims require that there be a request for benefits. Id. at
48-49. This correlates with the PMA’s statement that
“consumers use the web to screen themselves for benefits,
services, health risks, or anything else an agency wishes
to implement via its eligibility library.” Id. at 27. Third,
the claims require that a computer network match the
request with benefits. Id. at 48-49. This maps onto the
PMA’s use of the internet. Fourth, and finally, the claims
require that results be provided to the requester. As
stated before, the PMA reference allows “consumers [to]
use the Web to screen themselves for benefits, services,
health risks, or anything else an agency wishes to imple-
ment via its eligibility library.” Id. at 27. Considering
that each limitation is found in the PMA reference, we
agree with the Board that the PMA discloses Mr. Morsa’s
claims. Thus, considering that the PMA reference dis-
closes each claim limitation, and that the application’s
specification indicates that a person of ordinary skill in
the art is capable of programming the invention, the
Board’s conclusion that the PMA reference is enabling is
correct.
Mr. Morsa’s principal argument is that the state-
ments made by the Board appearing before the enable-
ment analysis show reversible error as they constitute
undesignated new grounds of rejection. We disagree.
These statements—such as the statement that database-
searching is old and well known and thus the focus on the
present application is not on searching databases general-
ly, but on the specific type of data used and the specific
searches performed—were merely descriptive. The
6 IN RE: MORSA
statements were not part of the Board’s enablement
analysis and were not necessary to the Board’s conclu-
sions. Thus, these statements do not constitute a new
ground of rejection and do not undermine the Board’s
conclusions.
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 specifica-
tion 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 specifi-
cation 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 implement-
ed by any programmer of ordinary skill . . . ,” thus allow-
ing 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.
For the reasons stated above, we affirm the judgment
of the Board as it pertains to the PMA being enabling.
We have reviewed Appellant’s remaining arguments and
find them unpersuasive.
AFFIRMED
COSTS
Each party shall bear their own costs.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STEVE MORSA,
Appellant
______________________
2015-1107
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 09/832,440.
______________________
NEWMAN, Circuit Judge, dissenting.
I write to attempt to stabilize the law of “anticipa-
tion,” 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 limita-
tions 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 refer-
ence 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
2 IN RE: MORSA
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
dissent.
The issue of anticipation was not waived
The Board’s statement that Mr. Morsa waived the is-
sue of anticipation before the Board is not comprehensi-
ble, 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 ob-
vious 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.
Several Morsa claims were allowed in the initial ex-
amination, and were not at issue in the prior appeal to
this court. Some Morsa claims were rejected by the Board
on the ground of obviousness, and in Morsa I this court
affirmed those rejections.
The two rejected claims
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 antici-
pation, and Mr. Morsa again appeals.
The claims demonstrate the issue, for the press re-
lease does not mention all of the steps and limitations of
the claims:
271. A benefit information match mechanism
comprising:
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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 re-
questing seeker;
wherein said match mechanism is operated at
least in part via a computer compatible network.
272. A method of generating a benefit result list
in real or substantially real time in response to a
benefit match request from a benefit seeker using
a computer network, comprising:
maintaining at least one database stored in
and/or on an article of manufacture including a
plurality of benefit listings;
receiving a benefit match request transmitted
from an article of manufacture from said seeker,
said request including said seekers criteria;
identifying using a processing device those of
said benefit listings having criteria which gener-
ate a match with said match request;
generating automatically a message to a re-
ceiving article of manufacture to inform said seek-
er via said computer network of those of said
benefits which match said seekers criteria.
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
4 IN RE: MORSA
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 estab-
lished 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 per-
missive. 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 Tech-
nologies, Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). This
presence must be found as fact, and when missing ele-
ments 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 undis-
closed 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” func-
tion 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
matter.
IN RE: MORSA 5
The majority compounds the Board’s error by rewrit-
ing 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 assumption is not prior art,
and cannot be the basis of “anticipation.”
The applicant’s specification is not prior art
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 inven-
tor 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).
Enablement of the prior art must come from 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)).
6 IN RE: MORSA
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 improp-
er 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 ob-
viousness and enablement, defying precedent, and adding
to the complexities of patenting. The issues should be
decided on the correct law. Thus I respectfully dissent.