Inre: Steve Morsa

United States Court of Appeals

for the Federal Circuit

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IN RE STEVE MORSA

______________________

2012-1609

______________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences in

Serial No. 09/832,440.

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Decided: April 5, 2013

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STEVE MORSA, of Thousand Oaks, California, pro se.

RAYMOND T. CHEN, Solicitor, Office of the Solicitor,

United States Patent and Trademark Office, of Alexan-

dria, Virginia. With him on the brief were JOSEPH G.

PICCOLO and COKE M. STEWART, Associate Solicitors.

______________________

Before RADER, Chief Judge, LOURIE, and O'MALLEY,

Circuit Judges.

O’MALLEY, Circuit Judge.

Mr. Steven Morsa (“Morsa”) appeals the decision of

the Board of Patent Appeals and Interferences (“Board”)

affirming the rejection of claims 181, 184, 188-203, 206,

210-25, 228, 232-47, 250, 254-68, 271, and 272. Substan-

tial evidence supports the Board’s factual determinations,

2 INRE: STEVE MORSA

and we agree with the Board’s ultimate legal conclusion

that claims 181, 184, 188-203, 206, 210-25, 228, 232-47,

250, and 254-68 would have been obvious in light of the

prior art. The Board performed an incorrect enablement

analysis, however, when it determined that claims 271

and 272 were anticipated. Therefore, we affirm in part

and vacate in part and remand.

BACKGROUND

A. Morsa’s Patent Application

On April 12, 2001, sole inventor Morsa submitted util-

ity patent application No. 60/211228 (“the ’228 applica-

tion”) entitled “Method and Apparatus for the Furnishing

of Benefits Information and Benefits.” The ’228 applica-

tion discloses both a method and an apparatus for receiv-

ing a benefit information request from a user, searching a

benefit information database for benefits matching the

request, and then returning benefit information to the

user. In the specification, Morsa defines benefits as any

“‘things’ of value” given away to target entities. J.A. 1850.

Specifically, Morsa claimed in claim 271: 1

A benefit information match mechanism compris-

ing:

storing a plurality of benefit registrations on at

least one physical memory device;

receiving via at least one data transmission device

a benefit request from a benefit desiring seeker;

1 The parties dispute whether this claim is actually

representative and we make no determination on that

issue. Claim 271, however, serves our purpose in general-

ly describing the invention claimed in the ’228 applica-

tion.

INRE: STEVE MORSA 3

resolving said benefit request against said benefit

registrations to determine one or more matching

said benefit registrations;

automatically providing to at least one data re-

ceiving device benefit results for said benefit re-

questing seeker;

wherein said match mechanism is operated at

least in part via a computer compatible network.

J.A. 298

B. The Prior Art

The examiner at the United States Patent and

Trademark Office (“PTO”) rejected Morsa’s various claims

as unpatentable over one piece of prior art, a publication

entitled “Peter Martin Associates Press Release” (“PMA”).

J.A. 616. Published on September 27, 1999, the PMA

announced the release of “HelpWorks, Web Edition,” a

new product that allows caseworkers and consumers to

“use the Web to screen themselves for benefits, services,

health risks, or anything else an agency wishes to imple-

ment via its eligibility library.” Id. In paragraph 3, the

PMA describes Helpworks, Web Edition as:

a state-of-the art software program designed to

help maximize the benefits and services that con-

sumers receive from public and private agencies.

It can be configured to evaluate any or all benefits

and programs required – Federal, State and/or lo-

cal.

Id. at 616-17.

In a January 18, 2007 Non-Final Rejection, the exam-

iner determined that this language in the PMA discloses a

system, method, computer-readable code, or mechanism

to allow individuals to make use of a variety of benefits

from multiple benefit providers. The PMA further states

that:

4 INRE: STEVE MORSA

HelpWorks Web Editions supports both a profes-

sionally directed deployment model – in which end

users are professional caseworkers, [and] a self-

service model in which consumers use the Web to

screen themselves for benefits, services, health

risks, or anything else an agency wishes to im-

plement via its eligibility library.

The power behind this unprecedented flexibility in

application and access is PMA’s newly released

Expert Eligibility Server (EES) technology. The

EES engine allows an agency to utilize HelpWorks

– Web Edition as well as other applications that

will leverage this dynamic technology. With EES

as the backbone, agencies can rapidly deploy eli-

gibility solutions for touch-screen kiosks, interac-

tive voice response systems, the Web and many

other platforms.

Id. at 617. In the same January 18 Office Action, the

examiner found that, through this language, the PMA

discloses a system comprising: (1) a means for storing

benefit information, benefit provider information, and

benefit correlation information, i.e., “eligibility library”

and “Expert Eligibility Server”; (2) a means for using an

individual’s provided data to search for benefits available

to that individual, i.e., “consumers use the Web to screen

themselves for benefits”; and (3) a means for generating a

message for informing an individual of the applicable

benefits, at least in part via a computer network, i.e.,

“Web enabled self-service model.” Additionally, the

examiner determined that, due to the Web enabled fea-

tures of HelpWorks, Web Edition, some user data must be

stored during the search process and that the results of

the search are generated in real or substantially real

time.

INRE: STEVE MORSA 5

C. Examiner Rejection and Board Decision

In a July 20, 2010 Non-Final Office Action, the exam-

iner determined that the PMA anticipates claims 271 and

272 of the ’228 application. He also determined that the

PMA did not disclose certain features of Morsa’s claims,

such as certain types of user data used to search, some

types of content returned to the user after a search, and

how users would pay for the benefit matching service.

The examiner reviewed these differences and determined

that the differences are such that the invention as a whole

was obvious in light of the PMA. Accordingly, the exam-

iner rejected claims 181, 184, 188-203, 206, 210-25, 228,

232-47, 250, and 254-68 as obvious. Morsa appealed this

rejection to the Board.

Before the Board, Morsa argued that the PMA is not

valid prior art because, although the PMA is dated Sep-

tember 27, 1999, it could not have been published until

after his application date of April 12, 2000. As evidence of

this, he pointed to: (1) a later publication that stated that

HelpWorks, Web Edition launched in 2001 and not 1999;

(2) the PMA publishing website’s terms of use which

stated that the company will not be held liable for inaccu-

racies; and (3) a trademark registration for HelpWorks,

Web Edition that stated that the mark was first used in

commerce in 2001. He argued that these facts indicate

that the publication date of the PMA is of questionable

accuracy. He also claimed that the discrepancy between

the various sources can be explained because the PMA

disclosed only the operation of HelpWorks and not Help-

Works, Web Edition.

Next, Morsa argued that the PMA is not enabling.

Specifically, Morsa argued that: (1) the PMA was not

enabling on its face; and (2) the PMA lacked specific

disclosures of the structural components and features of

Helpworks, Web Edition, how these features and compo-

nents were integrated together, and the process and steps

6 INRE: STEVE MORSA

through which the system progressed. In support of his

arguments, Morsa posed a number of specific and pointed

questions regarding the absence of detail in the PMA,

cited to our case law discussing the nature of disclosure

required before a reference can be deemed enabling, and

pointed out reasons why one could not produce or practice

the claimed invention based solely on the reading of the

PMA. Morsa bolstered his argument by noting that the

examiner relied primarily on two paragraphs of the PMA,

totaling only 117 words, to determine what the prior art

disclosed.

Finally, Morsa argued that the differences between

his claims and the prior art, as determined by the exam-

iner, are sufficient to support a finding of non-obviousness

and that various objective factors weigh in favor of non-

obviousness.

The Board concluded that the PMA reference was

published before Morsa’s application and that it was

presumed enabling because Morsa failed to present any

contrary evidence. The Board then sustained the examin-

er’s anticipation rejections. Turning to the examiner’s

obviousness rejections, the Board concluded that Morsa

had failed to present any evidence of objective factors for

the Board to consider. The Board also examined the

various alleged differences between Morsa’s claims and

the prior art and sustained the examiner’s rejections on

claims 181, 184, 188-92, 196, 197, 200-03, 206, 210-14,

218, 219, 222-25, 228, 232-36, 240, 241, 244-47, 250, 254-

58, 262, 263, and 266-68. The Board allowed claims 193-

95, 198, 199, 215-17, 220, 221, 237-39, 242, 243, 259-62,

264, and 265 as patentable over the PMA.

On July 14, 2011, Morsa filed a request for rehearing.

The Board granted this request to the extent it concluded

that its previous decision had used new grounds—that

some of the differences between the prior art and the

application related to non-functional descriptive materi-

INRE: STEVE MORSA 7

al—for rejecting Morsa’s claims. The request for rehear-

ing was denied in all other respects. On February 2,

2012, Morsa filed a second request for rehearing. The

Board denied that request. Morsa timely appealed and

we have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(4)(A).

STANDARD OF REVIEW

We review the Board’s legal conclusions de novo. In re

Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2000). We review

the Board’s factual findings for substantial evidence. In

re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Sub-

stantial evidence is less than the weight of the evidence

but more than a mere scintilla of evidence. Id. at 1312

(citing Consol. Edison Co. v. Nat’l Labor Relations Bd.,

305 U.S. 197, 229-30 (1938)). “[W]here two different,

inconsistent conclusions may reasonably be drawn from

the evidence in record, an agency’s decision to favor one

conclusion over the other is the epitome of a decision that

must be sustained upon review for substantial evidence.”

In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).

Enablement is a question of law based on underlying

factual findings. In re Antor Media Corp., 689 F.3d 1282,

1287 (Fed. Cir. 2012). “[A] prior art printed publication

cited by an examiner is presumptively enabling barring

any showing to the contrary by a patent applicant or

patentee.” Id. at 1288. When the applicant challenges

enablement, however, the Board must “thoroughly re-

vie[w]” all evidence and applicant argument to determine

if the prior art reference is enabling. Id. at 1292. Antici-

pation is a question of fact reviewed for substantial evi-

dence. In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir.

2009). “Obviousness is a question of law based on under-

lying factual findings: (1) the scope and content of the

prior art; (2) the differences between the claims and the

prior art; (3) the level of ordinary skill in the art; and (4)

objective considerations of nonobviousness.” In re Cyclo-

8 INRE: STEVE MORSA

benzaprine Hydrochloride Extended-Release Capsule

Patent Litig., 676 F.3d 1063, 1068 (Fed. Cir. 2012) (citing

Graham v. John Deere Co., 383 U.S. 1, 17–18, (1966)),

cert. denied, 133 S. Ct. 933 (2013).

DISCUSSION

A. The Publication Date of the Prior Art

Morsa continues to argue here on appeal that the

PMA’s publication date was after the date of his applica-

tion. In particular, he points to several reasons why he

believes the date listed on the prior art reference is sus-

pect, including publications which state that HelpWorks,

Web Edition was released on a different date, and the

PMA publisher’s terms of use document that denied

liability for inaccurate information. The Board rejected

these arguments, relying on the date disclosed in the

publication itself. As this is a question of fact, we review

the Board’s decision for substantial evidence. Despite

Morsa’s arguments, the PMA is clearly labeled “Peter

Martin Releases HelpWorks, Web Edition” and is dated

September 27, 1999. J.A. 616. In this context, this pro-

vides substantial evidence for the Board to determine that

the PMA was published before the critical date.

B. Enablement and Anticipation

Morsa also renews his argument that the PMA is not

enabling. In particular, he identifies specific defects in

the PMA’s disclosure, including a lack of operational

structures and features of HelpWorks, Web Edition, the

way those features and structures interact together, and

the specific steps that HelpWorks, Web Edition uses to

match users to benefits. Morsa also contends that a press

release containing only 117 words of disclosure may be

considered non-enabling on its face.

The Board rejected Morsa’s arguments by stating that

he failed to present any declarations or affidavits to

establish the reference as not enabling and, citing In re

INRE: STEVE MORSA 9

Pearson, 494 F.2d 1399, 1405 (CCPA 1974), concluded

that argument alone cannot take the place of evidence. In

its decision on Morsa’s first request for rehearing, the

Board relied on our decision in Amgen, Inc. v. Hoechst

Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir.

2003), holding that a patent cited as prior art is presumed

enabling, for this same argument. The Director, in oppo-

sition here, updated this argument to reflect our holding

in In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir.

2012). 2

In Antor, we held that publications used as prior art

by the PTO are presumed enabling. Id. at 1288. The

court then examined whether Antor had succeeded in

rebutting this presumption. Id. at 1289-93. In answering

this question, the court examined the language of the

prior art references, the declarations of Antor’s experts,

and Antor’s attorney argument about the forward looking

nature of the prior art’s disclosure. Id. Although the

court ultimately found Antor’s argument to be without

merit, our decision in Antor cannot be read to require an

applicant to submit affidavits or declarations to challenge

the enablement of prior art references.

The presumption in Antor is a procedural one—

designed to put the burden on the applicant in the first

instance to challenge cited prior art; the PTO need not

come forward with evidence of enablement before it may

2 Relying on Amgen, the Board decided Morsa’s first

request for rehearing on December 6, 2011, before this

court’s decision in Antor. The Director updated this

argument to rely on Antor because Antor expands the

presumption of enablement established in Amgen to

include all printed publications, such as the PMA in this

case. See Antor, 689 F.3d at 1288; Amgen, 314 F.3d at

1354.

10 INRE: STEVE MORSA

rely upon a prior art reference as grounds for a rejection.

Id. at 1288. Once an applicant makes a non-frivolous

argument that cited prior art is not enabling, however,

the examiner must address that challenge. While an

applicant must generally do more than state an unsup-

ported belief that a reference is not enabling, and may

proffer affidavits or declarations in support of his position,

we see no reason to require such submissions in all cases.

When a reference appears to not be enabling on its face, a

challenge may be lodged without resort to expert assis-

tance. Here, Morsa identified specific, concrete reasons

why he believed the short press release at issue was not

enabling, and the Board and the examiner failed to ad-

dress these arguments.

Despite the less than illuminating nature of the PMA,

the Director also argues that the court should consider

the PMA enabling because it is “at least as enabling” as

Morsa’s application. We are not persuaded.

First, an examiner must determine if prior art is ena-

bling by asking whether a person of ordinary skill in the

art could make or use the claimed invention without

undue experimentation based on the disclosure of that

particular document. See 35 U.S.C. § 112. While refer-

ence to the patent application is appropriate for purposes

of determining what the claimed invention is, i.e., what

falls within the scope of the claims, the anticipation

exercise must assess the enabling nature of a prior art

reference in light of the proposed claims. To the extent

the Director argues that a head to head comparison

between the disclosures in the documents is appropriate

moreover, the PTO’s description of the application is

inaccurate. The level of detail and disclosure in the

application far exceeds that in the PMA. Absent a finding

that the application’s disclosures are unrelated to the

invention actually claimed, we cannot agree that the

enabling nature of the two documents the PTO seeks to

compare are, in fact, comparable.

INRE: STEVE MORSA 11

Since both the Board and the examiner failed to en-

gage in a proper enablement analysis, we vacate the

finding of anticipation and remand claims 271 and 272 for

further proceedings.

C. Obviousness

Over the course of the prosecution history, the exam-

iner and the Board made factual findings concerning the

scope and content of the prior art, the differences between

the prior art and the claims, and what one of skill in the

art would understand from the disclosure in the prior art.

Accordingly, we consider the Board’s factual findings with

deference and review the Board’s legal conclusions of

obviousness de novo.

In considering the PMA, the examiner made multiple

factual findings relevant to our obviousness inquiry.

Specifically, the examiner found that the PMA disclosed

that HelpWorks, Web Edition is a configurable screening

tool that searches for benefits that match user entered

criteria. The examiner also found that one of ordinary

skill in the art would have found it obvious to configure

HelpWorks, Web Edition to use any kind of user data

necessary to correctly match users to the benefits in the

system’s benefit library. The examiner further noted that

the PMA discloses “an eligibility-screening tool based on

entered criteria, and the amount of criteria entered would

obviously equate to varying amounts of system matches

(well known function of database correlation systems).”

J.A. 211 The examiner concluded that HelpWorks, Web

Edition must have stored data, as data storage is inherent

to internet operations, and thus one of ordinary skill

would use that stored data to search. While the examiner

found no disclosure in the PMA relating to a method of

paying for services, the examiner determined that the

PMA disclosed that HelpWorks, Web Edition was availa-

ble to the public and that “Official Notice is taken that

charging for services provided to users was a well-known

12 INRE: STEVE MORSA

form of business at the time the invention was made.”

J.A. 208. Based on our review of the PMA reference, we

find that these factual findings are supported by substan-

tial evidence.

The Board considered and rejected Morsa’s arguments

that objective factors weighed in favor of finding non-

obviousness, stating that Morsa had failed to provide

evidence of any of the objective factors. Our case law

requires the Board to consider evidence of objective fac-

tors in any obviousness determination. In re Sernaker,

702 F.2d 989, 996 (Fed. Cir. 1983); see also In re Cyclo-

benzaprine Hydrochloride Extended-Release Capsule

Patent Litig., 676 F.3d at 1075. Here, however, Morsa

simply listed various objective factors without any sup-

porting evidence. The Board did not err in failing to

consider evidence of objective factors when there was no

evidence to consider.

Morsa argues claims 184, 200-03, 206, 222, 223-25,

228, 233, 236, 240, 241, 244-47, 250, and 266-68 were not

obvious in light of the prior art because they claim benefit

searches using types of user data not disclosed in the

prior art. He also argues that claims 192, 196, 197, 214,

218, 219, 236, 240, 241, 258, 262, and 263 were not obvi-

ous in light of the prior art because, when a user searches,

the claimed system returns content to the user that the

prior art does not disclose. Finally, Morsa contends that

claims 189, 211, 233, and 255 were not obvious in light of

the prior art because they claim paying for benefit match-

ing services using the benefits themselves. Having exam-

ined the factual findings made by the examiner, we agree

with the Board’s conclusion that it would have been

obvious to one of ordinary skill in the art to arrive at the

invention recited in claims 181, 184, 188-92, 196, 197,

200-03, 206, 210-14, 218, 219, 222-25, 228, 232-36, 240,

INRE: STEVE MORSA 13

241, 244-47, 250, 254-58, 262, 263, and 266-68 using the

PMA. 3

CONCLUSION

We find the Board’s factual determinations to be sup-

ported by substantial evidence, and we agree with its

ultimate legal conclusions of obviousness. The Board,

however, failed to engage in a proper enablement analy-

sis. The Board’s rejection of the various claims is there-

fore affirmed in part, vacated in part, and remanded.

AFFIRMED IN PART, VACATED IN PART, AND

REMANDED

3 The Board also relied on our holding in In re Ngai,

367 F.3d 1336, 1339 (Fed. Cir. 2004), as alternative

grounds to determine that various differences between

Morsa’s claims and the prior art were non-functional

descriptive material that could not distinguish the inven-

tion from the prior art. Because the examiner’s factual

findings are sufficient to support our conclusion that the

claims were obvious, we need not address these alterna-

tive grounds.