Finjan v. Rea (Supreme Court 2013)
In its recently filed petition for certiorari, Finjan asks the court to determine whether "prior art should be presumed enabled" when being applied during prosecution before the United States Patent and Trademark Office. The Government's response in opposition alters the question somewhat by asking "Whether, in proceedings to determine whether a patent application should be granted, the [USPTO] bears the burden of demonstrating that a prior art printed publication that anticipates the invention for which the patent is sought enables a person of skill in the art to practice the invention."
The PTO Argues:
The presumption of enablement is consistent with the general rule that the examiner need not raise and explain every possible issue surrounding each ground of rejection. Because the primary purpose of the prima facie showing is to provide notice, an examiner "is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling." Antor. When an examiner identifies anticipation as a ground of rejection, that notification informs the applicant that he may raise lack of enablement in his response.
The presumption of enablement also reflects the Federal Circuit's recognition that requiring the examiner preemptively to make the detailed findings necessary to verify enablement would be "manifestly inefficient," "burdensome," and "entirely unnecessary." Jung. Because the enablement inquiry requires an analysis of the degree of experimentation necessary to implement an invention, "an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible." Antor. … The applicant is better positioned than the PTO to gather evidence supporting his contention that the prior art is not enabling.