Affidavits Are Not Required To Challenge Prior Art Enablement

In re Morsa

Addressing the issue of whether an anticipatory prior art reference was enabled during prosecution, the U.S. Court of Appeals for the Federal Circuit vacated part of a decision by the U.S. Patent Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) that found that applicant had failed to rebut the presumption that prior art references are enabled, finding that affidavits or declarations are not required to challenge the enablement of the prior art reference.  In re Morsa, Case No. 12-1609 (Fed. Cir., Apr. 5, 2013) (O'Malley, J.).

Morsa filed an application directed to the furnishing of benefits information and benefits.  The examiner rejected the claims being anticipated over a publication entitled "Peter Martin Associates Press Release" (PMA).  PMA related to a new product that allows users to "use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its