Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling
Cindy Chen | October 5, 2012
In re Antor Media Corporation
July 27, 2012
Panel: Rader, Lourie and Bryson. Opinion by Lourie.
Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references. The prior art references include three printed publications and one U.S. patent. The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling. The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
Antor Media Corp. (“Antor”) owns U.S. Patent No. 5,734,961 (“the ‘961 patent”), which covers methods for transmitting recorded information from a central server to subscribers via a high data digital telecommunications network. On ex parte reexamination of the ‘961 patent, the Examiner rejected all of the patent’s claims as anticipated or obvious over the following four prior art references:
- Ghafoor: A 1988 research publication disclosing a multimedia database system to provide multimedia services using a network controller, multimedia servers, communications network such as a local area network, or a broadband integrated services digital network and workstations.
- MINOS: A 1987 article published in the Journal of Management Information Systems disclosing a system for storing multimedia digital information on a central server accessible by a remote workstation over a network.
- Huang: A 1988 publication reviewing the state of the art in diagnostic imaging, including a description of a system that allows for the storage and retrieval of radiographic using a telecommunications network.
- Barrett: U.S. Patent No. 4,918,588 disclosing a computer-based office automation system that retrieves document images and provides an image access subsystem built around a minicomputer connected to a telecommunications network.
On appeal to the Board of Patent Appeals and Interference (“the Board”), Antor argued that first, the claims were not anticipated or obvious in light of the four prior art references, and second, the Ghafoor and MINOS references were incapable of anticipation as they were not enabling. The Board rejected both of Antor’s arguments. Specifically as to the issue of non-enablement, the Board found that prior art publications cited by an examiner are presumptively enabling. Antor appealed to the Federal Circuit.
A prior art reference cannot anticipate a claimed invention if its disclosure is not enabling as to what is being taught. Thus, the principal issue on appeal is whether a prior art printed publication is presumptively enabling. Siding with the Board, the Federal Circuit held that prior art printed publication cited by an examiner during prosecution is presumptively enabling barring any showing to the contrary by a patent applicant. Amgen Inc. v. Hoechst Marion Rousse, Inc. established that both claimed and unclaimed materials disclosed in a prior art patent enjoy the presumption of enablement. The presumption exists not as a statutory presumption, but as a procedural convenience. The PTO lacks the resources to test each and every cited prior art for enablement. The burden is therefore better placed on a patent applicant to show, by experiment or argument, why the disclosures are not enabling. The court found that the same rationale applies to prior art printed publications. The court summarized:
[D]uring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipating by giving adequate notice, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. (emphasis added).
Having found that the cited prior art references are presumptively enabling, the court went on to conclude that Antor had failed to rebut the presumption. Antor had not shown that based on the prior art teachings, a person of ordinary skill in the pertinent art would have to engage in undue experimentation in order to practice the ’961 patent’s claims. In fact, the court faulted Antor for failing altogether to take into account the level of skill in the art. Antor pointed out the inadequacies of the references without recognizing that a person skilled in the art could have overcome those inadequacies with only routine experimentation. Also, even though Antor had submitted an expert declaration in support of its nonenablement argument, the court appeared to give very little weight to the declaration.
Specifically with respect to the Ghafoor reference, the court was not persuaded by Antor’s argument that Ghafoor is not enabling because its use of such forward-looking language as “should” renders the disclosure merely precatory. The court found that the presence of forward-looking language is not dispositive of the question of enablement. Disclosures in a prior art publication may be precatory and still satisfy enablement. Indeed, “invention in a prior art publication need not have actually been made or performed to satisfy enablement.”
Finding that the Ghafoor reference was enabling, the court affirmed the Board’s rejection of all but six of the claims of the ‘961 patent as anticipated by Ghafoor. The court affirmed the Board’s rejection of the remaining six claims as having been obvious over Barrett in view of MINOS. The court rejected Antor’s argument that MINOS was not enabling. MINOS was presumptively enabling, and even if that presumption was rebutted, which Antor had not done, the court explained that a non-enabling reference may nevertheless qualify as prior art for the purpose of determining obviousness.
The court also rejected Antor’s contention that its licensing activities based on the ‘961 patent were secondary consideration of nonobviousness. Without a showing of nexus between the licenses granted and the merits of the invention claimed in the ‘961 patent, Antor’s proffered evidence of licensing activities was insufficient to overcome obviousness.
Antor Media clarifies that presumption of enablement applies not only to prior patents and patent applications, but also to prior printed publications. Anything disclosed in any printed publication is presumptively enabling and therefore potentially anticipatory. To the extent that forward-looking statements may be enabling, publications of preliminary research in scientific journals, as well as any optimistic speculation of the research’s potential future implication and application, can serve as anticipatory prior art.
Antor Media gives significant deference to patent examiners’ rejection of claims. Certainly, the decision places the burden of proving non-enablement of potentially anticipatory cited art where it is most logical and justifiable, and this may also increase an applicant’s burden of proving novelty over broad prior art references.
Be prepared to support an argument that a prior art reference is not enabling with sufficient evidence to overcome the presumption of enablement.