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”).