Statements in the specification asserting a high level of skill in the art may be used to lower the bar for enablement of the prior art as well as the application itself. Here, for example, even high-level descriptions in a prior art press release about “us[ing] the Web to screen [users] for benefits” were found to be enabling due to the specification’s admission that its system “can be implemented by any programmer of ordinary skill.” “The specification made clear that a skilled computer artisan would readily know how to use conventional computer equipment and how to program it; thus, only ordinary experimentation would be needed to make the claimed program.” It may therefore be best to provide a few example implementations rather than overly characterizing and especially praising the level of skill in the art within the specification.
Background / Facts: The application on appeal here from rejection at the PTO is directed to searching a database for “benefits” information in response to a user request. In rejecting the claims as anticipated, the PTO cited as prior art a press release (“PMA”) announcing the release of 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.”
Issue(s): Whether the high-level descriptions in the press release prior art were sufficiently enabling to allow one skilled in the art to make and use such a system.
Holding(s): Yes. Focusing heavily on “the knowledge that a relevant skilled artisan would have in this case,” the court relied on “numerous admissions” in the applicant’s specification “as to what one skilled in the art at the time of the invention would have known,” including in particular the statements that the system as described in the application “can be implemented by any programmer of ordinary skill in the art using commercially available development tools” and that “search routines for accomplishing this purpose are well within the knowledge of those of ordinary skill in the art.” The court therefore concluded that the high-level descriptions in the press release prior art were sufficiently enabling because “the specification made clear that a skilled computer artisan would readily know how to use conventional computer equipment and how to program it; thus, only ordinary experimentation would be needed to make the claimed program.”