In In re Morsa, Appeal No. 2015-1107, the Federal Circuit affirmed the PTAB’s judgment that a prior art reference was enabling.
In an earlier decision, In re Morsa, 713 F.3d 104 (Fed. Cir. 2013), the Federal Circuit vacated and remanded the PTAB’s determination that two claims were anticipated because the PTAB’s enablement analysis was incorrect. On remand, the PTAB determined that the disputed anticipating reference was enabled. The PTAB found that Morsa’s specification showed that only “ordinary” computer programming skills were needed to make and use the claimed invention. The PTAB then determined that the reference’s disclosure, combined with what a skilled computer artisan would have known, rendered the reference enabling and anticipatory.
The Federal Circuit held that the PTAB properly determined the reference was enabling. The Federal Circuit focused on the fact that Morsa’s specification made numerous admissions as to what one skilled in the art at the time of invention would have known. It concluded that the reference disclosed each claim limitation and the application’s specification indicated that a person of ordinary skill in the art would have been capable of programming the invention. The Federal Circuit also rejected Morsa’s argument that the PTAB’s statements regarding database searching being old and well known were undesignated new grounds of rejection, concluding that these statements were merely descriptive and not part of the enablement analysis.