In re Morsa – Challenging Enablement of Prior Art
- Apr 26 2013 |
- Category: News
With its recent decision in In re Morsa, No. 2012-1609 (Fed. Cir. Apr. 5, 2013), the Fed. Cir. lowered the burden on an applicant to argue that a cited non-patent publication prior art reference is not enabling. The Board of Patent Appeals had interpreted the Court’s prior ruling in In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), as requiring a patent applicant to produce evidence in the form of declarations and affidavits to overcome a presumption of enablement in a cited prior art reference. In In re Antor Media Corp., the Fed. Cir. held that non-claimed patent subject matter or a printed publication cited by an examiner as a prior art reference is “presumptively enabling barring any showing to the contrary by a patent applicant.”
In In re Morsa *9, the Fed. Cir. explained that “[t]he presumption in Antor is a procedural one-designed to put the burden on the applicant in the first instance to challenge the cited prior art reference.” The intent of the Court was to not require an examiner to provide evidence of enablement in support of every rejection. Id. *9-10. The Court used Morsa to refine its holding in Antor stating that “[o]nce an applicant makes a non-frivolous argument that cited prior art is not enabling . . . the examiner must address that challenge . . . we see no reason to require [affidavits or declarations] in all cases.” Id. *10.
The Court continued to state that “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.” Id. *10. The Court agreed with the Board that it is appropriate for the examiner to reference the patent application for determining what the claimed invention is but the examiner “must assess the enabling nature of a prior art reference in light of the proposed claims.” Id. *10. Applying this rule to the case, the Court held that the Board and the examiner failed to engage in a proper enablement analysis. Id. *11. Accordingly, the Court vacated the Board’s finding of anticipation and remanded the claims for further proceedings. Id. *11.