US Patent 5,734,961 (the "‘961 patent") of Antor Media Corporation (“Antor”) was subject to reexamination at the U.S. Patent and Trademark Office. The invention claimed in the '961 allows subscriber access to information on information systems via a high data rate telecommunications network. The examiner rejected the claims of the ‘961 patent based on various combinations of four references, three of which were prior art printed publications, i.e., non-patent literature.
Antor Media Corporation appealed from the decision of the examiner to the Board of Patent Appeals and Interferences (the “Board”). The Board affirmed that the claims of the ‘961 patent were anticipated and obvious over the four references. In the appeal to the Board, Antor argued that the claims of the ‘961 patent were not anticipated or obvious because two of the references applied to the claims, i.e., the Ghafoor1 and Minos2 references, were not enabling. However, the Board found that Antor did not show that the Ghafoor and Minos references were not enabling and that their performance would require undue experimentation.
Antor appealed the decision from the Board to the United States Court of Appeals for the Federal Circuit (“Federal Circuit” or “court”). In the opinion3 rendered by the Federal Circuit, the court recalled Amgen4, where the court had decided that both claimed and unclaimed materials disclosed in a patent are presumptively enabling. As the decision in Amgen related to claimed and unclaimed materials disclosed in a patent, the court had to specifically address the issue of a prior art printed publication, which Ghafoor and Minos are.
The court first noted that unclaimed disclosures are not examined by the patent office and yet they enjoy a presumption of enablement during prosecution of a later patent. The court then likened a printed publication to unclaimed disclosure in a patent in that both the printed publication and unclaimed disclosure in a patent are not subject to scrutiny of examination for enablement. The court effectively concluded that since unclaimed disclosure in a patent enjoys a presumption of enablement, a prior art printed publication containing unclaimed disclosure should also enjoy a presumption of enablement.
However, the court failed to consider whether printed publications are required to be written to the same exacting standards as patents. Disclosures in patents, whether claimed or unclaimed, are typically written to exacting standards that include fulfillment of enablement. It’s not certain that printed publications are held to the same exacting standards as patents.
The extension of the court’s decision that a printed publication is presumptively enabling is that the examiner is not required to show that a prior art printed publication applied in a rejection is enabling. Rather, the applicant or patentee is responsible for proving non-enablement if the applicant or patentee is of the opinion that a cited reference is not enabling. The court gave a practical reason for not requiring the examiner to show enablement of prior art reference as part of applying the prior art reference in a rejection, i.e., that the patent office does not have the necessary facilities for testing for enablement of disclosures.
Another issue that came up in Antor’s case is use of “forward-looking” language. Antor argued that because Ghafoor uses forward-looking language, Ghafoor could not have grasped some features of the claims. The court argued that forward-looking language does not explain whether undue experimentation would be needed to perform the claimed invention. It is noted that both the Federal Circuit and the Board seem to equate proof of non-enablement with proof of undue experimentation.