Inre: Steve Morsa
713 F.3d 104
| Fed. Cir. | 2013Background
- Morsa appeals a Board decision affirming rejections of numerous claims in the ’228 application.
- The examiner relied on PMA (Peter Martin Associates) as prior art disclosing HelpWorks, Web Edition and related eligibility server concepts.
- Morsa challenged the PMA’s publication date, enablement, and differences with his claims, and argued objective factors for nonobviousness.
- The Board found PMA anticipatory for claims 271-272 and sustained obviousness rejections for many other claims.
- The Board granted rehearing partially, then denied further rehearing; the court vacates as to 271-272 enablement and remands, while affirming obviousness with respect to other claims.
- On review, the court affirms the Board’s factual findings, vacates the anticipation ruling for 271-272, and remands those claims for proper enablement analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PMA anticipates claims 271-272 | Morsa argues PMA is not enabling and dates are unreliable | Board reasoned PMA predated and is enabling, supporting anticipation | Anticipation vacated; enablement remand required |
| Whether the remaining claims are obvious over PMA | Differences are nonobvious and objective factors support nonobviousness | PM A teaches screening, data storage, and web-based benefit matching making claims obvious | Claims found obvious; affirmed for those claims |
| Whether the Board properly weighed enablement and anticipation under Antor Amgen framework | Antor requires thorough review; PMA may not be enabling on its face and date disputed | Prior art presumed enabling and Board followed appropriate precedent | Enablement analysis inadequate; remand on 271-272 |
Key Cases Cited
- In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (presumption of enablement for prior art; burden shifts to challenge enablement)
- Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) (prior art cited as enabling; burden on patentee to rebut)
- In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (anticipation reviewed with substantial evidence)
- In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) (alternative grounds for obviousness and non-obviousness considerations)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (framework for evaluating obviousness)
- In re Sernaker, 702 F.2d 989 (Fed. Cir. 1983) (requirement to consider objective factors in obviousness)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) (objective considerations in obviousness analysis)
- In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) (substantial evidence standard and determinations on factual findings)