Challenging The Enabling Quality Of Prior Art

In In re Morsa, the Federal Circuit reversed an anticipation rejection where the applicant had challenged the enabling quality of the cited prior art reference, even though the applicant had not submitted evidence in support of its position. While the court agreed with the USPTO that a prior art reference is presumptively enabled, it held that an applicant need not always bring forth evidence of non-enablement in order to shift the burden to the USPTO. This decision may make it easier to challenge the enabling quality of prior art, but pursuing an appeal without developing a supporting factual record still can be risky.

The Patent Application at Issue

The patent application at issue is Morsa's U.S. patent application 09/832,440, directed to "Method and Apparatus for the Furnishing of Benefits Information and Benefits." (For some reason, the Federal Circuit decision refers to the provisional patent application number, 60/211,228.) Claim 271 recites: