Anticipatory Nonpatent Publications Are Presumed Enabled

In In re Antor Media Corp., No. 11-1465 (Fed. Cir. July 27, 2012), the Federal Circuit affirmed the Board's decision rejecting on reexamination claims of U.S. Patent No. 5,734,961 ("the '961 patent") as anticipated or obvious.

Antor Media Corporation ("Antor") owns the '961 patent, which relates to a method and apparatus transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network. In a consolidated five-way ex parte reexamination, the PTO rejected all claims under reexamination as anticipated or obvious over four prior art references. Antor appealed to the Board, arguing that the claims were not obvious or anticipated and that two of the references were not enabled. The PTO did not present any rebuttal evidence regarding enablement. The Board found that Antor did not show that the references were not enabling nor required undue experimentation. Antor appealed.

"[W]e now hold 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." Slip op. at 7.

Antor argued that the Board erred by holding that prior art publications cited by an examiner are presumptively enabling during prosecution. The Court noted that "both claimed and unclaimed materials disclosed in a patent are presumptively enabling . . . in the district court as well as the PTO, placing the burden on the patentee to show that unclaimed disclosures in a prior art patent are not enabling." Slip op. at 7 (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003)). The Court extended this holding to find 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." Id. "[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." Id. at 10. The Court held that "[a]s long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the...