Digest of In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015) (precedential). On appeal from P.T.A.B. Before Prost, Newman, and O’Malley.

Procedural Posture: In a previous appeal, the CAFC vacated and remanded the Board’s rejection of two claims as anticipated because it failed to consider the applicant’s arguments concerning enablement of a prior art reference. On remand, the Board determined that the anticipating reference was enabled. The applicant again appealed the Board’s rejection of the claims as anticipated. The CAFC affirmed.

  • Prior Art Invalidity—Anticipation: The CAFC affirmed the Board’s determination that the prior art reference was enabling and, therefore, anticipatory. In doing so, the CAFC rejected the applicant’s three arguments: (1) that the Board, by taking official notice of its enablement analysis, generated new grounds of rejections; (2) that the reference was not enabling because it would have required a person of ordinary skill in the art to conduct undue experimentation; and (3) that the reference lacked several elements required by the claims. First, the Board generated no new grounds of rejections because the statements at issue were merely descriptive (i.e., they were not part of the Board’s enablement analysis, nor were they necessary to its conclusions). Second, the reference required no undue experimentation. The Board did not err in determining the level of knowledge of skill in the art by looking to the applicant’s specification because it did not use the specification to fill in gaps in the prior art. Rather, it used one section solely to determine the knowledge of a person of ordinary skill in the art. Finally, the Board did not err in mapping each limitation onto the reference to support its finding of anticipation.

Newman, dissenting:

  • Prior Art Invalidity—Anticipation: Judge Newman would reverse the Board’s rejection of the claims as anticipated. The Board’s “Official Notice” of the existence of undisclosed steps and claim elements was not an acceptable substitute for a rigorous anticipation analysis. The majority incorrectly found the missing subject matter in the applicant’s specification by stating that since the specification recites 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. But, an applicant’s enablement of his invention does not enable prior art or fill gaps needed to anticipate. The majority, therefore, incorrectly used information from the applicant’s specification to enable the prior art reference.