Applicants Can Challenge Enablement of References Cited by Patent Examiners

April 5, 2013

Andrew (A.J.) Tibbetts

What This Means To You

  • When a patent examiner cites a non-technical document as a reference during prosecution, consider arguing that the document does not contain a description sufficiently detailed to enable a skilled person to make or use the invention.
  • When arguing non-enablement of references, lay out detailed, concrete reasons why the reference does not enable the claimed subject matter.
  • Although examiners will be required to address arguments you make, consider preparing a written declaration from technical personnel to provide evidence to buttress your arguments.

Overview

The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) decision In re Steve Morsa deals with a patent applicant’s appeal of a rejection made by a patent examiner during examination. The case relates to procedural mechanics during examination of patent applications.

The law has long been clear that, when a reference is alleged to anticipate a claim, that reference must contain a description that enables a skilled person to make or use the invention recited in the claim. While the U.S. Patent and Trademark Office (USPTO) is entitled to presume during examination that a non-patent reference is enabling, the Federal Circuit has now clarified that patent applicants have a relatively low burden to meet for challenging that presumption.

Case Background

Inventor Steve Morsa applied for a patent on a computerized system that provides a database of benefits for an individual benefit-seeker. The USPTO rejected the claim stating that the technology had been previously created by another, and Morsa’s claim was therefore anticipated and invalid. As evidence, the examiner cited a press release describing a product that was going to be released into the marketplace.

Morsa argued the press release was not sufficiently detailed to meet the enablement requirement, and thus could not be relied on by the examiner to reject Morsa’s claim. This raised a question left open by the Federal Circuit in In re Antor Media Group.

In Antor, the Federal Circuit held that publications used as prior art by patent examiners were presumed enabling, reasoning that examiners do not have sufficient time or resources to prove enablement of every non-patent reference. In that case, the patent applicant had filed an expert declaration outlining reasons why the reference was not enabling. The Federal Circuit held that such a declaration could be sufficient to overcome the presumption of enablement and thereby force the examiner, if he/she disagreed, to demonstrate why the reference was enabling. It was unclear following Antor, however, whether an expert declaration was necessary to overcome the presumption or whether arguments alone could be sufficient.

In evaluating Morsa’s application, the USPTO answered this open question, holding that such declarations were necessary. Morsa appealed that decision to the Federal Circuit.

Decision Analysis


The Federal Circuit’s decision contains two important points related to the presumption of enablement. First, the Court clarified that a declaration is not necessary in every case to overcome the examiner’s presumption of enablement. The USPTO’s standard position had been that the “argument-cannot-take-the-place-of-evidence” rule should apply here and that declarations were therefore necessary to provide such evidence. The Federal Circuit disagreed in this context, stating it was procedurally fair to allow examiners to presume enablement, but unfair to force applicants to hire experts to overcome that presumption.

The second important point is the Court’s guidance on the types of arguments that may be sufficient to overcome the presumption. The decision describes Morsa’s arguments to the examiner regarding enablement as “non-frivolous” and said Morsa had “identified specific, concrete reasons why he believed the short press release at issue was not enabling.” The Court said such specific points are sufficient to force an examiner to at least “address” the arguments.

Additionally, the Court clarified that this enablement analysis is done in the context of the claimed technology, not the technology described in the reference. In other words, the dispute should focus on whether the reference describes the claimed technology in a way that would enable a skilled person to make/use the claimed technology. Due to differences between the topic of the reference and the claims, a reference could be enabling for the technology it is focusing on describing, but not be enabling for the claimed technology. Thus, arguments may be sufficient to overcome the presumption when they are based on specific features recited by the patent claims at issue.

Despite clarifying what types of arguments an applicant can make to question the presumption of enablement, the Court did not speak to what an examiner must do when an applicant makes such arguments. At most, the Court merely said an examiner must “address” the applicant’s arguments. It is unclear whether an examiner will be allowed to merely state on the record that the applicant’s arguments were considered and were unpersuasive, or whether he/she must provide either detailed reasons why the arguments were unpersuasive or his/her own argument why the reference is enabling. Future decisions from the Federal Circuit may address this issue as the law evolves.

Takeaways

This case provides another option to patent applicants for arguing the allowability of their applications at the USPTO.

While it has long been clear that a reference must be enabling, following this case, applicants can argue this point with the examiner without needing an expert’s assistance. However, since this case left open what an examiner must do when an applicant makes such arguments, consider filing a declaration. An examiner must consider a declaration as factual evidence in the record and may be more easily swayed by a declaration than by mere argument.

Of course, given the time and expense involved in obtaining an expert declaration, it may be advisable to argue this point to the examiner first without a declaration to gauge whether the examiner believes a reference is non-enabling. Then, if the examiner is not persuaded and this is an important point, consider following up with a declaration to convince the examiner with evidence.