Beware Applicant Enablement Admissions

In re Morsa: Applicant’s Admissions Can Support Prior Art Enablement

By Ambar P. Nayate

The Court of Appeals of the Federal Circuit found in In re Morsa,[1] referred to as Morsa II, that an applicant’s admission in the specification of a pending application can be used to as a basis to conclude that a prior art reference provides an enabling disclosure.[2]  Relying on the so-enabled disclosure of the prior art reference, the Court found the claims of the granted patent to be anticipated.

This was the second time that the Court reviewed whether a publication entitled Peter Martin Associates Press Release, dated September 27, 1999 (“PMA”), anticipated the claimed invention.[3]  In the original case,[4] referred to as Morsa I, the Court remanded the claims to the Patent Trial and Appeal Board (PTAB) to determine whether PMA was enabling, and on remand, the PTAB determined that PMA was enabling.[5]

In Morsa II, the Court, citing In re Antor Media Corp.,[6] stated: “[e]nablement of prior art requires that the reference teach a skilled artisan–at the time of the filing to make or carry out what it discloses in relation to the claimed invention without undue experimentation.”[7]  To determine enablement, the Court started with the knowledge that a skilled artisan would have in this case and looked to admissions in Applicant’s specification as to what one skilled in the art would have known.[8]

In particular, the Court relied on findings from the PTAB that the specification characterized central processing units (CPUs) and memories as “well known to those skilled in the art” and stated that CPUs and memories were “used in conventional ways to process requests for benefit information in accordance with the stored instructions,” and further that the system describes in the specification “can be implemented by any programmer of ordinary skill in the art using commercially available development tools…”[9]

After listing various admissions in the specification with respect to the skill level of one of ordinary skill in the art, the Court mapped portions of the PMA reference to the claimed features.[10]  The Court then concluded that: “considering that the PMA reference discloses each claim limitation, and that the application’s specification indicates that a person of ordinary skill in the art is capable of programming the invention, the Board’s conclusion that the PMA reference is enabling is correct.”[11]

It may be surprising to some that the Court looked at Applicant’s specification to determine whether a prior art reference is enabled.  The dissent raises this question, as discussed below.  However, the Court’s findings raise additional questions that the dissent does not raise: if Applicant’s specification did not make the admissions, would the prior art reference no longer be enabled?  Can the PMA reference be enabled with respect to Morsa’s claims, but not enabled for claims in another application that does not contain such admissions?

The answers to the questions cannot be that the PMA reference is enabled for some applications but not others.  Presumably, for consideration of the PMA reference in regard to a different application, the Court would reach the same result, but rely on other, similar evidence of level of skill that may be available from other resources.  Still, the analysis of the Court could lead to a result where the PMA reference is specifically enabled for Morsa’s claims.

Nevertheless, there are practice points to be taken from this case.  The Court throughout relied on statements in the specification that concluded what one of ordinary skill in the art would have understood or that which was well known.  For instance, as quoted above, the Court relied on statements such as “well known to those skilled in the art,” “used in conventional ways,” and “can be implemented by any programmer of ordinary skill in the art.”

To avoid providing inadvertent support for the enablement of prior art references, a patent drafting practitioner may consider limiting statements in the specification that characterize the capabilities of one of ordinary skill in the art.  In writing the specification, the practitioner may wish to balance any benefit of stating that something is well known to those in the art versus the potential for inadvertently raising the level of skill for purposes of enablement.  On the contrary, the practitioner may consider simply providing examples or explanation of the subject matter that is describe.  For instance, rather than stating that CPUs and memories are “well known,” the applicant in Morsa could have provided examples of CPUs and memories, which would have been sufficient to enable the application without making admissions regarding level of skill.

In general, practitioners should consider avoiding any discussion of level of skill to enable the invention, and instead, explicitly enable the invention.  If enablement is in question, rather than attributing heightened capabilities to those skilled in the art, the practitioner should consider filling potential holes with additional disclosure.  Indeed, the Court noted that: “Mr. Morsa, amongst other things, admitted in the specification that the system as described in the patent ‘can be implemented by any programmer of ordinary skill…,’ thus allowing him to avoid having to teach the public this very concept” (emphasis added).[12]

Whether the above-quoted statement that Morsa’s specification did not teach the concept but for the statements about one of ordinary skill is debatable, the lesson still exists.  Practitioners should enable the invention fully within the four-corners of the application, and not rely on hand waving statements toward level of skill.  Statements about level of skill may have marginal benefit, especially if the disclosed invention is properly enabled, but may strengthen the prior art, as occurred in Morsa II.

The dissent stated that “Morsa’s enablement of his invention does not enable the prior art press release, or fill gaps needed to anticipate the Morsa system.”[13]  Asserting that enablement of the prior art must come from prior art, the dissent stated: “[t]he gaps in the prior art cannot be filled by the invention at issue; it is improper to transfer Mr. Morsa’s teachings into the press release in order to enable the press release.”

While the dissent raises interesting points and the pendulum as to the question of enablement may swing back to the side of the dissent, for now, it appears that admissions regarding level of skill the art may be used to support a finding of enablement of prior art reference.  Although the admissions in Morsa II emanated from the application as originally filed, it is conceivable that admissions presented during prosecution could have similar evidentiary effect for purposes of supporting prior art enablement.  Practitioners should, therefore, think twice about including attributions of a high level of skill, whether within patent applications or otherwise.