Affirming the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (the Board) decision upholding a patent examiner’s rejection of the claims during the reexamination, the U.S. Court of Appeals for the Federal Circuit held that prior art printed publications cited by an examiner during prosecution are presumptively enabling. In re Antor Media Corp., Case No. 11-1465 (Fed. Cir., July 27, 2012) (Lourie, J.).

Antor owns a U.S. patent relating 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. The goal of the patent is to allow subscribers to access and receive information—digital media such as music, images, documents, video, and software—stored on information systems over a telecommunications network. The USPTO granted ex parte reexamination and rejected the claims as being anticipated and obvious based on four separate prior art references and their various combinations. Three of the prior art references were printed publications (referred to respectively as the “Ghafoor reference,” the “MINOS reference” and the “Huang reference”). The remaining prior art reference was a U.S. patent.

Antor appealed the PTO’s finding to the Board of Patent Appeals and Interferences arguing that the claims of its patent were not anticipated or obvious in light of two of the printed publications because those references were not enabling. The PTO did not submit any rebuttal evidence on the issue. The Board nevertheless upheld the PTO’s finding holding that Antor had not shown that the Ghafoor and MINOS references were not enabling or required undue experimentation. Antor appealed the Board’s decision to the Federal Circuit.

On appeal, Antor argued that the Board erred by holding that prior art publications cited by an examiner are presumptively enabling during prosecution. Antor argued that the presumption of enablement is applicable to only prior art patents, not to publications, because the PTO must examine patents for enablement before they issue. The Court squarely rejected Antor’s argument. The Court recalled its decision in Amgen v. Hoechst Marion Roussel, where it found that in the context of a prior art patent, both claimed and unclaimed materials disclosed in the patent are presumptively enabling. The Court noted that unlike claimed disclosures in a patent, unclaimed disclosures are not examined by the PTO, yet these unclaimed features still receive a presumption of enablement during prosecution of a later patent.

Recognizing that printed publications lack the same scrutiny of examination as unclaimed features in a patent, the Court found it logical that printed publications should receive the same presumption of enablement. Accordingly, the Court held that during prosecution, the PTO is entitled to reject claims by a prior art publication or patent without conducting an inquiry into whether or not the prior art reference is enabling. As long as the PTO makes a proper prima facie showing of anticipation, the burden shifts to the applicant to submit rebuttal evidence of non-enablement.

Turning to the merits of Board’s ultimate decision that the claims of the ’961 patent were unpatentable, the Court found that the Antor had not rebutted the presumption of enablement of the cited prior art publications because it had not shown that undue experimentation would be need to practice the various limitations of its patent claims based on the disclosure in the cited prior art publications. Accordingly, the Court affirmed the Board’s decision.