Inre: Steve Morsa , 713 F.3d 104 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE STEVE MORSA
______________________
2012-1609
______________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Serial No. 09/832,440.
______________________
Decided: April 5, 2013
______________________
STEVE MORSA, of Thousand Oaks, California, pro se.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia. With him on the brief were JOSEPH G.
PICCOLO and COKE M. STEWART, Associate Solicitors.
______________________
Before RADER, Chief Judge, LOURIE, and O'MALLEY,
Circuit Judges.
O’MALLEY, Circuit Judge.
Mr. Steven Morsa (“Morsa”) appeals the decision of
the Board of Patent Appeals and Interferences (“Board”)
affirming the rejection of claims 181, 184, 188-203, 206,
210-25, 228, 232-47, 250, 254-68, 271, and 272. Substan-
tial evidence supports the Board’s factual determinations,
2 INRE: STEVE MORSA
and we agree with the Board’s ultimate legal conclusion
that claims 181, 184, 188-203, 206, 210-25, 228, 232-47,
250, and 254-68 would have been obvious in light of the
prior art. The Board performed an incorrect enablement
analysis, however, when it determined that claims 271
and 272 were anticipated. Therefore, we affirm in part
and vacate in part and remand.
BACKGROUND
A. Morsa’s Patent Application
On April 12, 2001, sole inventor Morsa submitted util-
ity patent application No. 60/211228 (“the ’228 applica-
tion”) entitled “Method and Apparatus for the Furnishing
of Benefits Information and Benefits.” The ’228 applica-
tion discloses both a method and an apparatus for receiv-
ing a benefit information request from a user, searching a
benefit information database for benefits matching the
request, and then returning benefit information to the
user. In the specification, Morsa defines benefits as any
“‘things’ of value” given away to target entities. J.A. 1850.
Specifically, Morsa claimed in claim 271: 1
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;
1 The parties dispute whether this claim is actually
representative and we make no determination on that
issue. Claim 271, however, serves our purpose in general-
ly describing the invention claimed in the ’228 applica-
tion.
INRE: STEVE MORSA 3
resolving said benefit request against said benefit
registrations to determine one or more matching
said benefit registrations;
automatically providing to at least one data re-
ceiving device benefit results for said benefit re-
questing seeker;
wherein said match mechanism is operated at
least in part via a computer compatible network.
J.A. 298
B. The Prior Art
The examiner at the United States Patent and
Trademark Office (“PTO”) rejected Morsa’s various claims
as unpatentable over one piece of prior art, a publication
entitled “Peter Martin Associates Press Release” (“PMA”).
J.A. 616. Published on September 27, 1999, the PMA
announced the release of “HelpWorks, Web Edition,” a
new product that allows caseworkers and 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. In paragraph 3, the
PMA describes Helpworks, Web Edition as:
a state-of-the art software program designed to
help maximize the benefits and services that con-
sumers receive from public and private agencies.
It can be configured to evaluate any or all benefits
and programs required – Federal, State and/or lo-
cal.
Id. at 616-17.
In a January 18, 2007 Non-Final Rejection, the exam-
iner determined that this language in the PMA discloses a
system, method, computer-readable code, or mechanism
to allow individuals to make use of a variety of benefits
from multiple benefit providers. The PMA further states
that:
4 INRE: STEVE MORSA
HelpWorks Web Editions supports both a profes-
sionally directed deployment model – in which end
users are professional caseworkers, [and] a self-
service model in which consumers use the Web to
screen themselves for benefits, services, health
risks, or anything else an agency wishes to im-
plement via its eligibility library.
The power behind this unprecedented flexibility in
application and access is PMA’s newly released
Expert Eligibility Server (EES) technology. The
EES engine allows an agency to utilize HelpWorks
– Web Edition as well as other applications that
will leverage this dynamic technology. With EES
as the backbone, agencies can rapidly deploy eli-
gibility solutions for touch-screen kiosks, interac-
tive voice response systems, the Web and many
other platforms.
Id. at 617. In the same January 18 Office Action, the
examiner found that, through this language, the PMA
discloses a system comprising: (1) a means for storing
benefit information, benefit provider information, and
benefit correlation information, i.e., “eligibility library”
and “Expert Eligibility Server”; (2) a means for using an
individual’s provided data to search for benefits available
to that individual, i.e., “consumers use the Web to screen
themselves for benefits”; and (3) a means for generating a
message for informing an individual of the applicable
benefits, at least in part via a computer network, i.e.,
“Web enabled self-service model.” Additionally, the
examiner determined that, due to the Web enabled fea-
tures of HelpWorks, Web Edition, some user data must be
stored during the search process and that the results of
the search are generated in real or substantially real
time.
INRE: STEVE MORSA 5
C. Examiner Rejection and Board Decision
In a July 20, 2010 Non-Final Office Action, the exam-
iner determined that the PMA anticipates claims 271 and
272 of the ’228 application. He also determined that the
PMA did not disclose certain features of Morsa’s claims,
such as certain types of user data used to search, some
types of content returned to the user after a search, and
how users would pay for the benefit matching service.
The examiner reviewed these differences and determined
that the differences are such that the invention as a whole
was obvious in light of the PMA. Accordingly, the exam-
iner rejected claims 181, 184, 188-203, 206, 210-25, 228,
232-47, 250, and 254-68 as obvious. Morsa appealed this
rejection to the Board.
Before the Board, Morsa argued that the PMA is not
valid prior art because, although the PMA is dated Sep-
tember 27, 1999, it could not have been published until
after his application date of April 12, 2000. As evidence of
this, he pointed to: (1) a later publication that stated that
HelpWorks, Web Edition launched in 2001 and not 1999;
(2) the PMA publishing website’s terms of use which
stated that the company will not be held liable for inaccu-
racies; and (3) a trademark registration for HelpWorks,
Web Edition that stated that the mark was first used in
commerce in 2001. He argued that these facts indicate
that the publication date of the PMA is of questionable
accuracy. He also claimed that the discrepancy between
the various sources can be explained because the PMA
disclosed only the operation of HelpWorks and not Help-
Works, Web Edition.
Next, Morsa argued that the PMA is not enabling.
Specifically, Morsa argued that: (1) the PMA was not
enabling on its face; and (2) the PMA lacked specific
disclosures of the structural components and features of
Helpworks, Web Edition, how these features and compo-
nents were integrated together, and the process and steps
6 INRE: STEVE MORSA
through which the system progressed. In support of his
arguments, Morsa posed a number of specific and pointed
questions regarding the absence of detail in the PMA,
cited to our case law discussing the nature of disclosure
required before a reference can be deemed enabling, and
pointed out reasons why one could not produce or practice
the claimed invention based solely on the reading of the
PMA. Morsa bolstered his argument by noting that the
examiner relied primarily on two paragraphs of the PMA,
totaling only 117 words, to determine what the prior art
disclosed.
Finally, Morsa argued that the differences between
his claims and the prior art, as determined by the exam-
iner, are sufficient to support a finding of non-obviousness
and that various objective factors weigh in favor of non-
obviousness.
The Board concluded that the PMA reference was
published before Morsa’s application and that it was
presumed enabling because Morsa failed to present any
contrary evidence. The Board then sustained the examin-
er’s anticipation rejections. Turning to the examiner’s
obviousness rejections, the Board concluded that Morsa
had failed to present any evidence of objective factors for
the Board to consider. The Board also examined the
various alleged differences between Morsa’s claims and
the prior art and sustained the examiner’s rejections on
claims 181, 184, 188-92, 196, 197, 200-03, 206, 210-14,
218, 219, 222-25, 228, 232-36, 240, 241, 244-47, 250, 254-
58, 262, 263, and 266-68. The Board allowed claims 193-
95, 198, 199, 215-17, 220, 221, 237-39, 242, 243, 259-62,
264, and 265 as patentable over the PMA.
On July 14, 2011, Morsa filed a request for rehearing.
The Board granted this request to the extent it concluded
that its previous decision had used new grounds—that
some of the differences between the prior art and the
application related to non-functional descriptive materi-
INRE: STEVE MORSA 7
al—for rejecting Morsa’s claims. The request for rehear-
ing was denied in all other respects. On February 2,
2012, Morsa filed a second request for rehearing. The
Board denied that request. Morsa timely appealed and
we have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
STANDARD OF REVIEW
We review the Board’s legal conclusions de novo. In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2000). We review
the Board’s factual findings for substantial evidence. In
re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Sub-
stantial evidence is less than the weight of the evidence
but more than a mere scintilla of evidence. Id. at 1312
(citing Consol. Edison Co. v. Nat’l Labor Relations Bd.,
305 U.S. 197, 229-30 (1938)). “[W]here two different,
inconsistent conclusions may reasonably be drawn from
the evidence in record, an agency’s decision to favor one
conclusion over the other is the epitome of a decision that
must be sustained upon review for substantial evidence.”
In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).
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 re-
vie[w]” all evidence and applicant argument to determine
if the prior art reference is enabling. Id. at 1292. Antici-
pation is a question of fact reviewed for substantial evi-
dence. In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir.
2009). “Obviousness is a question of law based on under-
lying 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-
8 INRE: STEVE MORSA
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).
DISCUSSION
A. The Publication Date of the Prior Art
Morsa continues to argue here on appeal that the
PMA’s publication date was after the date of his applica-
tion. In particular, he points to several reasons why he
believes the date listed on the prior art reference is sus-
pect, including publications which state that HelpWorks,
Web Edition was released on a different date, and the
PMA publisher’s terms of use document that denied
liability for inaccurate information. The Board rejected
these arguments, relying on the date disclosed in the
publication itself. As this is a question of fact, we review
the Board’s decision for substantial evidence. Despite
Morsa’s arguments, the PMA is clearly labeled “Peter
Martin Releases HelpWorks, Web Edition” and is dated
September 27, 1999. J.A. 616. In this context, this pro-
vides substantial evidence for the Board to determine that
the PMA was published before the critical date.
B. Enablement and Anticipation
Morsa also renews his argument that the PMA is not
enabling. In particular, he identifies specific defects in
the PMA’s disclosure, including a lack of operational
structures and features of HelpWorks, Web Edition, the
way those features and structures interact together, and
the specific steps that HelpWorks, Web Edition uses to
match users to benefits. Morsa also contends that a press
release containing only 117 words of disclosure may be
considered non-enabling on its face.
The Board rejected Morsa’s arguments by stating that
he failed to present any declarations or affidavits to
establish the reference as not enabling and, citing In re
INRE: STEVE MORSA 9
Pearson, 494 F.2d 1399, 1405 (CCPA 1974), concluded
that argument alone cannot take the place of evidence. In
its decision on Morsa’s first request for rehearing, the
Board relied on our decision in Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir.
2003), holding that a patent cited as prior art is presumed
enabling, for this same argument. The Director, in oppo-
sition here, updated this argument to reflect our holding
in In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir.
2012). 2
In Antor, we held that publications used as prior art
by the PTO are presumed enabling. Id. at 1288. The
court then examined whether Antor had succeeded in
rebutting this presumption. Id. at 1289-93. In answering
this question, the court examined the language of the
prior art references, the declarations of Antor’s experts,
and Antor’s attorney argument about the forward looking
nature of the prior art’s disclosure. Id. 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
2 Relying on Amgen, the Board decided Morsa’s first
request for rehearing on December 6, 2011, before this
court’s decision in Antor. The Director updated this
argument to rely on Antor because Antor expands the
presumption of enablement established in Amgen to
include all printed publications, such as the PMA in this
case. See Antor, 689 F.3d at 1288; Amgen, 314 F.3d at
1354.
10 INRE: STEVE MORSA
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 unsup-
ported 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 assis-
tance. 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 ad-
dress these arguments.
Despite the less than illuminating nature of the PMA,
the Director also argues that the court should consider
the PMA enabling because it is “at least as enabling” as
Morsa’s application. We are not persuaded.
First, an examiner must determine if prior art is ena-
bling 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 refer-
ence 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.
INRE: STEVE MORSA 11
Since both the Board and the examiner failed to en-
gage in a proper enablement analysis, we vacate the
finding of anticipation and remand claims 271 and 272 for
further proceedings.
C. Obviousness
Over the course of the prosecution history, the exam-
iner and the Board made factual findings concerning the
scope and content of the prior art, the differences between
the prior art and the claims, and what one of skill in the
art would understand from the disclosure in the prior art.
Accordingly, we consider the Board’s factual findings with
deference and review the Board’s legal conclusions of
obviousness de novo.
In considering the PMA, the examiner made multiple
factual findings relevant to our obviousness inquiry.
Specifically, the examiner found that the PMA disclosed
that HelpWorks, Web Edition is a configurable screening
tool that searches for benefits that match user entered
criteria. The examiner also found that one of ordinary
skill in the art would have found it obvious to configure
HelpWorks, Web Edition to use any kind of user data
necessary to correctly match users to the benefits in the
system’s benefit library. The examiner further noted that
the PMA discloses “an eligibility-screening tool based on
entered criteria, and the amount of criteria entered would
obviously equate to varying amounts of system matches
(well known function of database correlation systems).”
J.A. 211 The examiner concluded that HelpWorks, Web
Edition must have stored data, as data storage is inherent
to internet operations, and thus one of ordinary skill
would use that stored data to search. While the examiner
found no disclosure in the PMA relating to a method of
paying for services, the examiner determined that the
PMA disclosed that HelpWorks, Web Edition was availa-
ble to the public and that “Official Notice is taken that
charging for services provided to users was a well-known
12 INRE: STEVE MORSA
form of business at the time the invention was made.”
J.A. 208. Based on our review of the PMA reference, we
find that these factual findings are supported by substan-
tial evidence.
The Board considered and rejected Morsa’s arguments
that objective factors weighed in favor of finding non-
obviousness, 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 fac-
tors in any obviousness determination. In re Sernaker,
702 F.2d 989, 996 (Fed. Cir. 1983); see also In re Cyclo-
benzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d at 1075. Here, however, Morsa
simply listed various objective factors without any sup-
porting evidence. The Board did not err in failing to
consider evidence of objective factors when there was no
evidence to consider.
Morsa argues claims 184, 200-03, 206, 222, 223-25,
228, 233, 236, 240, 241, 244-47, 250, and 266-68 were not
obvious in light of the prior art because they claim benefit
searches using types of user data not disclosed in the
prior art. He also argues that claims 192, 196, 197, 214,
218, 219, 236, 240, 241, 258, 262, and 263 were not obvi-
ous in light of the prior art because, when a user searches,
the claimed system returns content to the user that the
prior art does not disclose. Finally, Morsa contends that
claims 189, 211, 233, and 255 were not obvious in light of
the prior art because they claim paying for benefit match-
ing services using the benefits themselves. Having exam-
ined the factual findings made by the examiner, we agree
with the Board’s conclusion that it would have been
obvious to one of ordinary skill in the art to arrive at the
invention recited in claims 181, 184, 188-92, 196, 197,
200-03, 206, 210-14, 218, 219, 222-25, 228, 232-36, 240,
INRE: STEVE MORSA 13
241, 244-47, 250, 254-58, 262, 263, and 266-68 using the
PMA. 3
CONCLUSION
We find the Board’s factual determinations to be sup-
ported by substantial evidence, and we agree with its
ultimate legal conclusions of obviousness. The Board,
however, failed to engage in a proper enablement analy-
sis. The Board’s rejection of the various claims is there-
fore affirmed in part, vacated in part, and remanded.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
3 The Board also relied on our holding in In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004), as alternative
grounds to determine that various differences between
Morsa’s claims and the prior art were non-functional
descriptive material that could not distinguish the inven-
tion from the prior art. Because the examiner’s factual
findings are sufficient to support our conclusion that the
claims were obvious, we need not address these alterna-
tive grounds.