Federal Circuit No. 2015-1107
The Federal Court's decision in In re Morsa is decision that shows the potential for admissions made during prosecution of a patent application to be used against the applicant in determining whether a prior art reference is sufficiently enabled. Morsa argued that a publication, the Peter Martin Associates Press Release (“PMA”), did not anticipate Morsa's claims because the PMA reference did not satisfy enablement requirement.
In a prior appeal to the Federal Circuit by Morsa (“Morsa I”), the Court held that Morsa successfully rebutted the presumption that a prior art reference cited by the USPTO is presumed to be enabling because Morsa had directly challenged enablement of the reference. Consequently, the burden of proof had shifted to the USPTO to prove that the PMA reference satisfied the enablement requirement.
On remand from Morsa I, the Patent Trial and Appeal Board (PTAB) determined that the PMA reference satisfied the enablement requirement. Morsa again appealed to The Federal Circuit, which affirmed the PTAB's finding regarding enablement of the prior art reference. The primary issue in the decision was the knowledge that a person having ordinary skill in the art (PHOSITA) would have had at the time of invention, because the reference must enable that person to make Morsa’s invention in order for it to anticipate. In concluding that the PMU reference was enabled, the PTAB stated that the PHOSITA is deemed know at least what Morsa’s own specification admitted.
The specification of Morsa's application made multiple admissions as to what one skilled in the art at the time of the invention would have known. For example, the specification stated 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…" (¶  of the published application).
Based on the admissions made in the specification, the Federal circuit determined that a PHOSITA would have possessed enough knowledge to make Morsa’s claimed invention based on the PMA reference disclosure, and the reference was thus enabling. Therefore, the Federal circuit affirmed PMA's decision that Morsa's claims were anticipated by the PMA reference.