An applicant is not required to submit affidavits or declarations to challenge the enablement of prior art references. Any non-frivolous argument that cited prior art is not enabling must be addressed by the PTO.
Background / Facts: The application on appeal from the PTO here is directed to receiving 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. The specification defines benefits as any “‘things’ of value” given away to target entities. In rejecting the claims as anticipated, the PTO cited as prior art a publication entitled “Peter Martin Associates Press Release” (“PMA”), which 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 implement via its eligibility library.” Mr. Morsa challenged the application of the reference as prior art, arguing that it was a mere press release and not enabling. In support of his arguments, Morsa posed a number of specific and pointed questions regarding the absence of detail in the PMA, cited to 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. In response, the PTO concluded that the PMA reference was “presumed enabling because Morsa failed to present any contrary evidence.”
Issue(s): Whether an applicant is required to submit affidavits or declarations to challenge the enablement of prior art references.
Holding(s): No. “While an applicant must generally do more than state an unsupported 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 assistance. 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 address these arguments.”