Federal Circuit-Statements in Application Properly Used to Enable Prior ArtOctober 27, 2015

One of the basic requirements for the grant of a patent by the USPTO is the invention must be shown to be “new.”In practice, this means that the invention must be sufficiently different from the existing prior art, including patents, publications, and existing products. However, in order for a piece of prior art to preclude patentability, it must enable a person of ordinary skill in the technology to arrive at the claimed invention without undue experimentation. A recent decision by the Federal Circuit Court of Appeals adds a new twist to the paradigm—the application itself may help to enable otherwise insufficient prior art.

In in re Morsa, the applicant had appealed to the Patent Trial and Appeal Board (PTAB) several rejections by the USPTO. One of the rejections was based on a press release that was asserted to anticipate the claimed invention under 35 U.S.C. § 102. The USPTO asserted that the press release enabled a person of skill in the art to arrive at the claimed invention. The PTAB had originally upheld the rejection, but the Federal Circuit had vacated this decision on the basis that the PTAB had not correctly carried out its enablement analysis, and remanded the case back to the PTAB for further consideration. The PTAB, on remand, again affirmed the rejection, determining that the press release was enabling, in part based on the disclosure of the application in question as to what would be within the knowledge of a person of ordinary skill in the art.

On appeal, the Federal Circuit confirmed that it was proper to look to the specification of the pending application in determining whether a piece of prior art enabled the claimed invention. Specifically, the court upheld the determination of anticipation because the “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 court was careful to note that the patent specification was not considered prior art, but rather the specification could be used to assess the knowledge of a person of ordinary skill in the art at the time of invention.

This decision underscores the need to carefully consider any admissions or assertions made in the specification of a patent application, as these may have detrimental, unintended consequences.

The full decision can be found here.