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United States Court of Appeals for the Federal Circuit
October 19, 2015, Decided
[***1864] [*1375] Prost, Chief Judge.
This case presents the second time that this court reviews whether a publication entitled Peter Martin Associates Press Release, dated September 27, 1999 ("PMA"), [*1376] anticipates the claimed invention.1 In the original case, we remanded the claims to the United States Patent and Trademark Office, Patent Trial and Appeal Board ("Board") for the Board to consider Mr. Morsa's arguments concerning the enablement of the PMA reference. In re Morsa, 713 F.3d 104, 112 (Fed. Cir. 2013) ("Morsa I"). On remand, the Board determined that the reference was enabling. Appellant's Informal Br. App. 7. Mr. Morsa argues that the reference was not enabling. See generally Appellant's Informal Br. We disagree with Mr. [**2] Morsa and therefore affirm.
Morsa I provides detailed background information regarding this case, and thus we will only briefly set forth the relevant background information here. Morsa I, at 106. In Morsa I, we affirmed the Board's rejection of claims 181, 184, 188-203, 206, 210-25, 228, 232-47, 250, and 254-68 of utility patent application No. 60/211228, as substantial evidence supported the Board's ultimate legal conclusion that the claims were obvious in light of the prior art. Id. However, we vacated and remanded as to the Board's determination that claims 2712 and 272 were anticipated because the Board performed an incorrect enablement analysis. Id.
On remand, the Board determined that the anticipating reference, PMA, was enabled. In reaching its conclusion the Board looked to Mr. Morsa's specification to determine what a person of ordinary skill in this particular field of art would know. The Board found that the specification showed that only "ordinary" computer programming skills were needed to make and use the claimed invention. The Board then determined that the PMA disclosure combined with what a skilled computer artisan would know rendered the PMA reference enabling and therefore anticipatory of claims 271 and 272.
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803 F.3d 1374 *; 2015 U.S. App. LEXIS 18042 **; 116 U.S.P.Q.2D (BNA) 1863 ***
IN RE: STEVE MORSA, Appellant
Prior History: [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 09/832,440.
anticipation, prior art, skill, press release, enabling, patent, specification, invention, match, database, official notice, subject matter, seeker, disclosure, benefits, steps, ordinary person, fill, gaps
Patent Law, US Patent & Trademark Office Proceedings, Appeals, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Anticipation & Novelty, Fact & Law Issues, Specifications, Enablement Requirement, Standards & Tests, Common Principles & Prior Art