[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
On July 27, 2012, in In re Antor Media Corp., the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie,* Bryson) affirmed the U.S. Patent & Trademark Office Board of Patent Appeals and Interferences decision that upheld the patent examiner's rejection of the claims during the reexamination of U.S. Patent 5,734,961, which related to the transmission of information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network, as anticipated and/or obvious. The Federal Circuit stated:
A prior art reference cannot anticipate a claimed invention "if the allegedly anticipatory disclosures cited as prior art are not enabled." [B]oth claimed and unclaimed materials disclosed in a patent are presumptively enabling. [T]hat presumption applies 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. [A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
Relying on the presumption of validity accorded to issued patents, 35 U.S.C. § 282, Antor asserts that a presumption of enablement is applicable only to prior art patents, not to publications, because "the PTO must examine [patents] for enablement before they issue, and 35 U.S.C. § 282 says patents are presumed valid." However, we rejected that argument [previously] because it is procedurally convenient to place the burden on an applicant who is in a better position to show, by experiment or argument, why the disclosure in question is not enabling or operative. It would be overly cumbersome, perhaps even impossible, to impose on the PTO the burden of showing that a cited piece of prior art is enabling. The PTO does not have laboratories for testing disclosures for enablement. Unlike claimed disclosures in a patent, unclaimed disclosures are thus not examined by the PTO at all. As these unclaimed, unexamined disclosures still receive a presumption of enablement during prosecution of a later patent, there is no reason why printed publications, which of course also lack the scrutiny of examination, should not logically receive the same presumption and for the same reasons.
During prosecution, an examiner is governed by 35 U.S.C. § 132, which requires notification to an applicant of the reasons for a rejection with "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application." Section 132 "does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection." Instead, that statute only requires that "an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." In discussing the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference, an examiner has met his initial burden. Indeed, as indicated with regard to unclaimed patent prior art, 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. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling.
[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. 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. Turning now to the Board's decision here, the prima facie rejections during prosecution put the burden of proving the nonenablement of [the prior art references] Ghafoor, MINOS, Huang, and Barrett on Antor. Antor argued to the Board that Ghafoor and MINOS were not enabling disclosures, relying primarily on the declaration of Dr. Ray Mercer. Antor did not challenge the enablement of Huang and Barrett. Because we hold that the Board did not err in finding that Ghafoor is enabling and anticipates the appealed claims, we do not address the other overlapping anticipation rejections relating to MINOS and Huang.
Antor argues that Ghafoor does not sufficiently enable a person of ordinary skill to make or use the invention in the '961 patent because Ghafoor is "forward looking," relying on Ghafoor's use of the term "should" throughout its disclosure and arguing that Ghafoor is not enabling as to three specific features of the '961 claims: "high data rate telecommunication network"; accessing and retrieving of data; and "a controller." [T]he mere use of forward-looking language (such as terms like "should") does not show one way or another whether a person of ordinary skill in the art would have to engage in undue experimentation to perform the claimed invention. Indeed, undue experimentation is determined based on both the nature of the invention and the state of the art. The word "should" thus constitutes a disclosure even if it is only precatory and does not necessarily convey the meaning of "did." Thus, the verb tense and word choice used in a prior art reference, taken without an understanding of the state of the art and the nature of the invention, shed no light on enablement. That reality is consistent with our precedent holding that the invention in a prior art publication need not have actually been made or performed to satisfy enablement.
Secondly, Antor argues that Ghafoor does not enable use of a "high data rate telecommunication network" connected to servers and workstations. . . . Antor has not rebutted the presumption that Ghafoor is enabling because it has not shown that undue experimentation would be needed to practice the claimed invention. The Board's rejection of claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, 26, and 27-29 as anticipated by Ghafoor is supported by substantial evidence and is therefore affirmed.
The Board also rejected claims 1-29, including the claims not covered by the Board's anticipation rejections, as having been obvious based on Barrett in view of MINOS. While Antor argues that MINOS is not enabling in challenging the Board's anticipation rejection, MINOS can still qualify as prior art in determining obviousness under 35 U.S.C. § 103, independent of enablement. [W]ith respect the Board's rejection of claims 1-29 as obvious based on the combination of MINOS and Barrett, we affirm the Board's determination.