In this case Steven Morsa appealed the decision of the Board of Patent Appeals and Interferences for utility application number US20030093283 claiming priority to provisional patent application 60/211228 (‘228 patent). The patent application is directed towards receiving a plurality of inputs for which a plurality of benefits may be determined for a qualified entity. The patent application included a whopping 180 claims in the original application, and appeared to grow close to 300 before the application was appealed. A representative claim (claim 271) is provided below.

271. A benefit information match mechanism comprising:

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;

resolving said benefit request against said benefit registrations to determine one or more matching said benefit registrations;

automatically providing to at least one data receiving device benefit results for said benefit requesting seeker; wherein said match mechanism is operated at least in part via a computer compatible network.


The examiner at the USPTO rejected Marsa’s claims as unpatentable over one piece of prior art, non-patent literature entitled “Peter Martin Associated Press Release (“PMA”). The press release included around 120 words and described a state of the art software program designed to help maximize the benefits and services received from public and private agencies. The Examiner issued a non-final rejection stating that this language discloses the limitations in above claim 271, or would have been obvious to one skilled in the art.

Responsive to a non-final office action, Marsa argued 1) that the PMA reference was filed after the date of his application data of April 12, 2000 the website that hosted the PMA article launched in  2001 2) the PMA article is not enabling to one skilled in the art, and 3) the the PMA article did not disclose each end every limitation of the recited claims.

The patent board of appeals held that the PMA references was 1) published before Morsa’s application 2) the PMA article was presumed enabling because MOrsa failed to present any contrary evidence, and 3) the PMA artice disclosed each limitation  recited in the claims. After a rehearing, Morsa timely appealed the Boards decisions to the Unites States Courts of Appeals.

The court of appeals reasoned that despite Morsa’s arguments regarding the publication date of the PMA article, the PMA article is clearly labeled “Peter Martin Releases Helpwords, Web edition” and is dated September 27, 1999. J.A. 616 because this provides substantial evidence for the Board to determine that the PMA was published before the critical date. Regarding obviousness, the court of appeals held that although PMA did not disclose any mechanism to store data, data storage is ineheren to internet operations and thus one of ordinary skill would use that stored data to search.  Further, the court of appeals stated that the charging for services provided to users was a well-known form of business at the time the invention was made, and therefore it would have been obvious to one skilled in the art to arrive at the invention recited in the claims.

However, the court of appeals disagreed with the board decision for enablement and anticipation of the PMA reference. The court of appeals stated that the patent board rejected Morsa’s arguments that the PMA was not enabling because Morsa failed to present any declarations or affidavits to establish the reference is not enabling.  The court of appeals stated that the correct analysis of whether a reference is enabling is by determining if a persona of ordinary skill in the art could make or use the claimed invention without undue experimentation based on the disclosure of that reference. The presumption is that a reference is enabling, but once an applicant makes a non-frivolous argument that cited prior art is not enabling, the examiner must address the challenge. While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and my proffer affidavits or declarations in support of his position, there is no reason to require such submissions in all cases. Because the examiner and the board failed to address Morsa’s arguments based on enablement, the court of appeals vacated the finding of anticipation for further proceedings.



1. Patent applications shouldn’t have 200+ claims. An independent claim should be used to broadly describe the most important features of an invention, and then the dependent claims should be used to clarify or further define the important features of an invention. Although there are many uses for inventions, writing 200 additional claims will likely not be a good way about going about prosecution for various reasons. First, examiners have limited time to review patent applications and in responding to office actions they are required to address each claim in an application. If an application has an excess number of claims the examiner will be unable to deliver quality office actions. Second, filing 200+ claims (assuming small entity, 3 independent claims, 180 dependent claims) will cost an extra $7200, merely on claims! A better strategy would be to file an application with a more detailed description of the invention, and if necessary file amendments to the claims with the additional details. Further, at a later point in time if you are unhappy with allowed claims, you can just re-file a new application claiming priority to your old application for only $600. Upon re-filing, an applicant has the benefit of the prosecution history in a related case.

2. Filing date arguments with the USPTO are hard to win unless you have substantial/hard evidence relating to the actual publication date of an article online. In the early stages of the internet, many websites didn’t have a “post date” or “time stamp” of when articles were posted, and many websites now still do not have a data associated with when an article was published in print and online. In Morsa’s case, his best bet would be get in contact with Helpworks and try to find documentation of actual publication dates. This should be relatively simple with emails from the author because most authors send emails to colleagues when they are published in a journal.  Having hard evidence of when things were published is what wins the day in court, not just alleging that something couldn’t happen (even if it appears it went that way).

3. When you are arguing enablement before the board of appeals, it is best to have affidavits from experts in the field on what is enabling. If not you get into an opinion battle with the USPTO and because the presumptions are typically in favor of the USPTO, without hard evidence an application is likely to lose these types of arguments.

4. Even if Morsa is to win his appeal, I believe that his claims as currently written are so broad that it is likely that the examiner can find better art. Because in this case the last office action that was issued was a non-final office action, the examiner more than likely thought the next step in prosecution was going to be a response to the non-final, and not an appeal to the board. When I get myself into a situation when I think the examiner is being unreasonable in a non-final office action, during an examiner interview I will typically tell the examiner that I will amend the claims, even if just clarifying amendments, but if the same cited art is raised my next step will be to appeal. If the examiner is truly being unreasonable, this has been a good tactic for me because it forces the examiner to provide better cited art and by providing clarifying amendments, the examiner has saved face because the scope of the claims have changed.  Examiners (and their supervisors) do not like their cases to appeal on questionable at best references.

By | 2013-04-15T18:03:04+00:00 April 15th, 2013|Patent Attorney Takeaways|Comments Off on IN RE STEVE MORSA: AN AUSTIN PATENT ATTORNEY’S REVIEW