Ex Parte Morsa

Patent Trial and Appeal Board

Jul 17, 2014

09832440 (P.T.A.B. Jul. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/832,440 04/11/2001 Steve Morsa 7403
91100 7590 07/18/2014
Steve Morsa
PO Box 1996
Thousand Oaks, CA 91358
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
07/18/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVE MORSA
____________________

Appeal 2011-007576
Application 09/832,440
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN,
ALLEN R. MacDONALD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant Steve Morsa (“Morsa” or “Appellant”) filed a Request for
Rehearing (hereinafter the “Request”), dated April 21, 2014, seeking
reconsideration of our decision on remand, mailed February 25, 2014,
(hereinafter the “Decision”) in which we affirmed the rejection of
claims 271 and 272 under 35 U.S.C. § 102(a) as anticipated by a
Peter Martin Associates press release (“PMA”) dated September 28, 1999.
We have jurisdiction over the Request under 35 U.S.C. § 6(b).
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Morsa argues in the Request that the Board misapprehended and/or
overlooked “specific points of law and fact” with respect to enablement and
anticipation. Request 2. For the reasons set forth below, we find Morsa’s
arguments unpersuasive, and we deny Morsa’s request to modify our
decision.
ANALYSIS
Enablement
Focusing first on the enablement issue, we cannot agree with Morsa
that the Board, in the Decision, engaged in an improper enablement analysis,
or that the Board otherwise failed to follow the Federal Circuit’s remand
guidance and instructions. Request 2–6. The Decision reflects the Board’s
careful, thorough review and consideration of Appellant’s arguments
regarding enablement, and also reflects the Board’s full compliance with the
Federal Circuit’s directives.
The original Board panel, in its final decision issued May 27, 2011,
affirmed the Examiner’s rejection of claims 271 and 272 as anticipated by
PMA. Ex Parte Steve Morsa, 2011 WL 2161120 (BPAI 2011). The Board
concluded that PMA was prior art and presumed enabling, and that Morsa
had not rebutted the presumption of enablement because Morsa presented
arguments only, and did not provide “declarations or affidavits to establish
that the PMA reference was not enabled.” Id. at *4.
In the decision on appeal, the Federal Circuit explained that “[t]he
presumption in [In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012)
that publications used as prior art by the PTO are presumed enabling] is a
procedural one – designed to put the burden on the applicant in the first
instance to challenge cited prior art.” In re Morsa, 713 F.3d 104, 110
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(Fed. Cir. 2013). But “[o]nce an applicant makes a non-frivolous argument
that cited prior art is not enabling . . . the examiner must address that
challenge.” Id.
Because Morsa identified “specific, concrete reasons” why he
believed PMA was not enabling, the court held that the Board erred in
failing to address those arguments. Id. The Federal Circuit, thus, vacated
the anticipation rejection as procedurally infirm and remanded the case to
the Board for substantive consideration of Morsa’s arguments.
Morsa asserts that the effect of the Federal Circuit decision was to
place the burden on the Board, and not on Morsa, to show that PMA is
enabling, i.e., that PMA would have enabled a person of ordinary skill in the
art to construct and practice the claimed invention as set forth in claims 271
and 272, without undue experimentation:
Because, as the Federal Circuit confirmed in its decision, the
Appellant has made such an argument [i.e., a non-frivolous
argument that cited prior art is not enabling], the burden is now
on the Board to show that PMA would have enabled a person of
ordinary skill in the art of 1999, without undue
experimentation, to construct and practice the claimed invention
as set forth in claims 271 and 272.

Appellant doesn’t have to show that PMA isn’t enabling
(though he elected to nonetheless do so in this RFR [Request
for Rehearing]). Instead, the PTO has to show that it is.
Which they have not done (and indeed cannot do). This burden
remains the PTO’s.

Request 18–19. However, that assertion reflects a fundamental
misunderstanding of the relevant law.
The Federal Circuit held in Antor that, during patent prosecution, an
examiner is entitled to reject claims as anticipated by a prior art publication
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without conducting an inquiry into whether that prior art reference is
enabling. Thus, as long as an examiner makes a proper prima facie case of
anticipation by giving adequate notice under 35 U.S.C. § 132, the burden
shifts to the applicant to submit rebuttal evidence of nonenablement.
Antor, 689 F.3d at 1289.
Here, the original Board panel concluded, without substantively
considering Morsa’s arguments, that Morsa failed to rebut the presumption
of enablement because Morsa did not provide declarations or affidavits to
establish that the PMA reference was not enabling. The Federal Circuit held
that, in doing so, the Board failed to engage in a proper enablement analysis.
The Federal Circuit, thus, remanded the case to the Board for substantive
consideration of Morsa’s arguments.
In other words, the Board was directed on remand to determine
whether Morsa’s arguments are sufficient to rebut the presumption of
enablement (i.e., whether Morsa has met its burden to show that the
information PMA supplies is insufficient for a person of skill in the art to
make the claimed invention (as recited in claims 271 and 272) without
undue experimentation), and not to independently prove, in the first instance,
that PMA is enabling.
Morsa argued before the original Board and the Federal Circuit that
PMA was not enabling because: (1) PMA lacks specific disclosures of the
structural components and features of HelpWorks, Web Edition, how these
features and components are integrated with each other, and within the
system as a whole, and how the operational and functional features operate
together, see, e.g., Appeal Brief 7 (“App. Br.,” filed December 18, 2010) and
(2) PMA includes “not even 309 words about the supposed construction and
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operation of HelpWorks Web Edition” and two paragraphs “totaling a
miniscule 117 words actually being directed to Web Edition itself.” App.
Br. 8. However, as we explained in the Decision, those arguments go to
how HelpWorks, Web Edition is implemented, not to the claimed invention.
As such, they are insufficient to rebut the presumption of enablement.
See Decision 7-8.
Morsa has maintained, and continues to maintain, that “[o]nly with
considerable undue experimentation – over who knows how many months or
years – if ever – could the ordinarily skilled artisan of PMA’s time 15 years
ago even hope to come up with the claimed invention.” Request 4. But
Morsa has not explained what or how much experimentation would have
been required by one with ordinary skill, and why that amount of
experimentation should be considered “undue.”
Morsa also has neither mentioned, nor made any effort to apply any of
the Wands factors, such as the level of skill involved, the quantity of
experimentation necessary, the predictability or unpredictability of the art, or
the breadth of the claims. Nor, for that matter, has Morsa otherwise set forth
facts sufficient to support a conclusion of undue experimentation under the
Wands factors, which the Federal Circuit has held “are a useful methodology
for determining enablement . . . .” Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362, 1372 (Fed. Cir. 1999). 1

1 Factors to be considered in determining whether a disclosure would
require undue experimentation include: (1) the quantity of experimentation
necessary; (2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the invention;
(5) the state of the prior art; (6) the relative skill of those in the art; (7) the
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Morsa ostensibly argues that the state of the art at the time of the
invention was such that one of ordinary skill in the art would not have been
enabled, based on the PMA disclosure, to make the claimed invention
without undue experimentation. Yet that argument is contradicted by
Morsa’s own Specification.
As set forth in detail in the Decision, the Specification describes that
the hardware requirements of the claimed database system can be satisfied
with conventional, commercially available processors and storage
components; that the system processor and storage devices are used in the
claimed method in conventional ways to process requests for benefit
information in accordance with stored instructions; that the system can be
implemented by a programmer of ordinary skill in the art using
commercially available development tools; and that suitable data structures
for storing benefit listings and search routines for identifying matching
benefit results are well within the knowledge of the skilled artisan.
See Decision at 8–10.
Morsa charges that the Board improperly relied on the disclosure in
the Specification “for enabling PMA” (see, e.g., Request 4). Instead, as
described above, the Board merely relied on Morsa’s admissions in
determining the state of the art at the time the invention was made, which is
properly considered together with the PMA disclosure in judging
enablement. See, e.g., In re LeGrice, 301 F. 2d 929, 939 (CCPA 1962) (the
proper test for judging the adequacy of a publication under § 102 is “whether
one skilled in the art to which the invention pertains could take the

predictability or unpredictability of the art; and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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description of the invention in the printed publication and combine it with
his own knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought.”).
Also contrary to Morsa’s assertions (see Request 5–10), the Board, in
the Decision, did not raise any new ground of rejection based on
non-functional descriptive material, Official Notice, or any other theory.
In fact, the Board was explicit in indicating that any issue of non–functional
descriptive material need not be reached, i.e., because PMA discloses a
database storing benefit information, as called for in claims 271 and 272.
Decision 6 n. 3.
The Board took Official Notice that it is old and well-known in the art
of database management to query a database in order to locate and retrieve
desired information, and also old and well-known that inherently any
database query process requires a database, a query, query results, and the
communication of those results to the query requester. But the Board did
not, even impliedly, suggest that there was any rejection at issue other than
the rejection of claims 271 and 271 under 35 U.S.C. § 102(a) as anticipated
by PMA.
Having reviewed and fully considered Morsa’s arguments, as the
Federal Circuit directed, for the reasons set forth above and in more detail in
the Decision, we find that Morsa has failed to present arguments sufficient to
rebut the presumption of enablement. We also find (though not required to
do so), for the reasons set forth in more detail in the Decision, that PMA is
enabling as a matter of law.
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Anticipation
Under 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the briefs
before the Board and evidence not previously relied upon in the brief and
any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.”
Morsa presents a new argument, beginning at page 17 of the Request,
that PMA, even if enabling, does not anticipate claims 271 and 272. And
Morsa asserts that this new argument is presented pursuant to 37 C.F.R.
§ 41.52(a)(2) based on a “recent relevant Federal Circuit Decision,”
i.e., Synqor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir.
2013).
We decline to consider this new argument because Morsa has not
shown that, based on Synqor, good cause exists for injecting an argument
that was not presented previously in Morsa’s Appeal Brief or Reply Brief.
There is nothing in the Request to indicate that Morsa is relying on a
new legal theory in Synqor to show that the Decision contains reversible
error. To the contrary, Morsa cites Synqor for the well-settled proposition
that “‘[a]nticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim.’” Synqor,
709 F.3d at 1375 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548 (Fed.Cir.1983)).
Morsa argues that PMA does not disclose every element of claims 271
and 272, either expressly or inherently. But this argument is one that Morsa
clearly could have made, but did not, in the original briefs before the Board.
Morsa has waived this proposed new argument for purposes of this
appeal. However, Morsa is not estopped from presenting the argument to an
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examiner, in the event of further prosecution of claims 271 and 272, or
claims of the same or similar scope.

DECISION
We are not persuaded that we misapprehended or overlooked any
point of fact or law in the Decision. Therefore, we decline to modify the
Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

rvb