The Software IP Report

Prior Art Publications Are Presumed to Be Enabling

The presumption that a prior art reference is enabled applies to printed publications in addition to patents, the Federal Circuit has explained in In re Antor Media Corp., No. 2011-1465 (Fed. Cir. July 27, 2012).  Further, the Federal Circuit affirmed the Board of Patent Appeals and Interferences and upheld rejections issued in a re-examination of U.S. Patent 5,734,961.

The claims of the ‘961 patent related “to a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network.”  Three of the four references used to reject the claims of the ‘961 patent were research publications or journal articles; the fourth was a United States patent.  During re-examination, the patent owner submitted an expert declaration to support an argument that two of the printed publications (“Ghafoor” and “MINOS”) were not enabling. The PTO submitted no rebuttal evidence.

The Board found that the patent owner had failed to show that the references were non-enabling, “and had not shown that their performance required undue experimentation.”  The Board then found the majority of the ‘961 patent claims anticipated by Ghafoor, and that most of these were also anticipated by another reference.  The Board further found certain claims anticipated by MINOS.  Ghafoor and MINOS were also used in obviousness rejections.

Before turning to the question of whether the PTO’s rejections were proper, the Court addressed the patent owner’s “argument that the Board erred by holding that prior art publications cited by an examiner are presumptively enabling during prosecution.”  Citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003), the Court explained that, to anticipate, a prior art reference must be enabled.  The Amgen court had stated that, whether in a district court or at the PTO, “both claimed and unclaimed materials disclosed in a patent are presumptively enabling.”  The patent owner has the burden of showing that unclaimed subject matter is not enabled.

Antor argued that “a presumption of enablement is applicable only to prior art patents, not to publications, because ‘the PTO must examine [patents] for enablement before they issue, and 35 U.S.C. § 282 says patents are presumed valid.'”  However, the Amgen court explicitly did not rely on § 282 as the source of the presumption; instead, the court held that “a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled” because it would place an undue burden on the PTO to have to show enablement, whereas the patent owner is better placed to meet this burden.  The PTO does not have laboratories with which to conduct research into enablement.  35 U.S.C. § 132 requires only that applicants be informed of the broad statutory basis for a rejection.

In sum, if an examiner discusses “the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference, an examiner has met his initial burden.”  Following the reasoning of Amgen, the Court here held that “during 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.”

The Court then examined the multiple rejections of the patent claims in detail, and affirmed them all.