Why Did I Say That? Knowledge of Person of Ordinary Skill Gleaned from Applicant’s Specification

In In re Morsa, No. 15-1107 (Fed. Cir. Oct. 19, 2015), the Federal Circuit affirmed the PTAB’s determination that an anticipating reference was enabling based on statements made in Morsa’s specification regarding the knowledge of a person of ordinary skill.

The Court previously considered whether a product press release anticipated the claimed invention and remanded to the PTAB to consider whether the press release was sufficiently enabled to anticipate Morsa’s claims. The PTAB held that the reference was sufficiently enabled because one of ordinary skill in the art, having read the press release, would know how to perform Morsa’s invention. For support, the PTAB cited Morsa’s specification, which admitted that certain programming skills necessary to perform his invention were well-known in the art.

On appeal, Morsa argued the PTAB erred in using his specification to prove that the reference was enabling. The Court disagreed, explaining that while using an applicant’s specification to fill gaps in the prior art is improper, using the applicant’s specification to determine the knowledge of a person of ordinary skill in the art is proper. Because the PTAB did only the latter, the Court affirmed the judgment of the PTAB that the reference was enabling.