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The PTAB held that a prior art reference was enabled and therefore it anticipated the claims at issue.  On appeal, Morsa argued that the PTAB’s reliance on statements in the specification of the application regarding the knowledge of persons of ordinary skill in the art constituted an undesignated new ground of rejection.  The court, however, affirmed, holding that the references to the specification statement were merely descriptive and demonstrated the level of knowledge in the art, which proved that only ordinary experimentation was necessary, not undue experimentation.

In her dissent, Judge Newman criticized the practice of the Patent Office to substitute “Official Notice” for elements missing from a reference as not being sufficient to show anticipation, because anticipation requires that all claim elements be present in a single reference.  Judge Newman further criticized the majority’s reliance on the specification statements for proving that the prior art reference was enabled.  The issue is whether the reference itself is enabled, not whether statements in the specification at issue can enable the prior art reference.  

In re: Morsa, Case No. 2015-1107 (October 19, 2015); Opinion by: Prost, joined by O’Malley; dissenting opinion by Newman; Appealed From: Patent Trial and Appeal Board.  Read the full opinion here

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