by Dennis Crouch
In re Antor Media Corp (Fed. Cir. 2012)(Lourie, J.)
As part of an ex parte reexamination process, the Board of Patent Appeals (BPAI) found Antor’s patent claims invalid as both anticipated and obvious based upon the combination of four prior art references. The patent under reexamination – No. 5,734,961 – covers a fairly simple network-based data transfer method.
On appeal to the Federal Circuit, Antor challenged the anticipation holding. Its argument was that the examiner had not provided any evidence that the asserted prior art was sufficient to enable anyone to practice the Antor invention. The Federal Circuit agreed that prior art must provide an enabling disclosure (for anticipation), but still rejected Antor’s argument by holding that the USPTO need not even consider the enablement question unless the applicant first presents prima facie evidence of non-enablement.
The court 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. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”
Thus, prior art references are presumed to be sufficiently enabled. Here, the court affirmed that Antor had not rebutted this presumption of enablement because the patentee did “not show[] that undue experimentation would be needed to practice the claimed invention” based upon the disclosure in the prior art.
Enablement is normally treated as a question of law. Here, however, enablement of the prior art is a subset of the factual inquiry into anticipation. As such, it appears that the court has treated enablement of the prior art as an underlying question of fact and applied the substantial evidence rule to its review of the BPAI decision.
To be clear, the prior art enablement question looks to whether the arguably anticipatory prior art sufficiently enables the invention now being patented. You’ll notice that the above discussion focused on anticipation rather than obviousness. The conclusion that a prior art reference lacks enablement does not exclude the reference from consideration during an obviousness challenge. Thus, Antor mounted (and lost) a separate argument against the obviousness rejections that had been affirmed by the BPAI. See Amgen Inc. v. Hoechst Marion Roussel, Inc. (Fed. Cir. 2003) (“Under § 103 … a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”).
An yes, I miss the joy of showing Mr. Odom his foolishness.
The prior art reference still has to be enabled, but the burden shifts to the Applicant to show evidence of non-enablement. Thus the only time it would be “even more difficult” for the applicant to overcome the rejection is if the applicant is unable to show such evidence.
If the court had agreed with Antor, an examiner would be burdened with showing evidence that every prior art reference aplied in a rejection is enabled. This is a silly and redundant burden considering that most prior art references are patents which, by their very nature, have already passed the PTO’s enablement tests.
If you need any further proof that Mr. Odom knows absolutely nothing about patent law, please go read that nonsensical post of his.
There’s a reason he doesn’t allow comments on his site anymore.
Err… no. If the examiner wants to reject a claim as not enabled, the burden is on the Examiner. MPEP 2164.04: “In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure).”
Again, the question is as between the PTO and the applicant. If the applicant wants to make an argument that the prior art reference IS NOT enabling, then they have already come to conclusion that they know something about the subject matter of that reference. Otherwise, it’s a bald assertion that simply requires that the PTO prove every cited reference is enabled.
link to patenthawk.com
Disagree in two ways:
The applicant would be best to know enablement for her invention, but it is an unsubstantiated assertion to say the applicant is best positioned to figure out enablement for any cited art (especially given that cited prior art can be in any art field that may “touch upon” a solution) applicants simply cannot keep up with PHOSITA.
For at least patent prior art the Office must already determine that claims are enabled as that is one of the legal requirements that become an earned presumption of validity.
I think that the CAFC got this right. In essence, the document speaks for itself. If there is a reason to doubt enablement, that is clearly an argument for the would-be patentee to raise. In addition, the patentee is also likely to be in the best place to show that a reference is not enabling.
Putting the burden on the PTO basically would take every reference out of prior art with one simple argument: the PTO has not shown that the reference is enabling and thus is not properly considered prior art (under 102, at least).
“The conclusion that a prior art reference lacks enablement does not exclude the reference from consideration during an obviousness challenge”. Pretty Interesting statement! From an obviousness point of view, this makes sense. The question is how the examiners will use this teaching in future to cite references during prosecution for obviousness rejection. If enablement is not required, it becomes even more difficult for the applicant to overcome an obviousness rejection.
Precisely where it should be.
Still guys, the PTO is fairly reasonable on this, if there is even reasonable doubt as to the enablement of the invention by the reference they’ll think it over. If there is a good reason to believe it is not enabled I’ve seen that spes are willing to sign off on a case.
Still true TJ, but now it is the applicant’s representative that gets to prove it.
This is a prima facie joke.
Newsbreak: all examiners are to attend science fiction events to scour the earth for references as enablement not required.
On your last point, but see In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“Although published subject matter is ‘prior art’ for all that it discloses, in order to render an invention unpatentable for obviousness, the prior art must enable a person of ordinary skill to make and use the invention.”).
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