In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was inadequate to overcome the presumption. While I understand the premise of the presumption, I am not comfortable with the court’s second-guessing of the expert declaration, and fear that it may invite violations of the court’s own rule against relying on conjecture over evidence.
The Prior Art at Issue
In re Antor arose from a reexamination proceeding. The Examiner rejected the claims as anticipated by or obvious in view of several prior art references. Antor challenged the enabling quality of two of the cited references:
As noted by the Federal Circuit, “A prior art reference cannot anticipate a claimed invention ‘if the allegedly anticipatory disclosures cited as prior art are not enabled.’” Thus, if Antor could prevail on the enablement issue, the rejections based on those references would be withdrawn.
The Presumption of Enablement
The Federal Circuit cited its 2003 decision in Amgen Inc. v. Hoechst Marion Roussel, Inc. for the proposition that “both claimed and unclaimed materials disclosed in a patent are presumptively enabling.” The court acknowledged that it had not previously addressed whether this same presumption applies to printed publications, but found that the rationale behind the presumption supports its application to all prior art:
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.”
[The] 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.
Thus, the court reached this conclusion:
[W]e therefore hold 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. …
[T]he burden shifts to the applicant to submit rebuttal evidence of nonenablement.
Overcoming the Presumption
Turning to the facts of Antor’s appeal, the Federal Circuit found that even though Antor had submitted a declaration to show that the references were not enabled, it had not met its burden of proof. While it is difficult to draw general guidance from the court’s discussion of the specific facts, it appears that the court found three general faults with Antor’s evidence.
First, the court was not impressed by Antor’s focus on specific word choices used in the references (such as Antor’s emphasis on Ghafoor’s use of “forward looking” language, such as its “use of the term ‘should’ throughout its disclosure.”). Rather, it agreed with the USPTO that the use of “forward-looking language is irrelevant to enablement.”
Second, the court found that Antor had not taken into account the “level of skill in the art” or shown that “undue experimentation” would have been required to practice the aspects of the prior art at issue. Rather, Antor pointed out the shortcomings of the references without considering whether the skilled artisan could have overcome those shortcomings with only routine experimentation.
Third, the court disagreed with factual assertions regarding the references. For example, where Antor argued that specific features were missing from the references, the court agreed with the USPTO’s explanations of how those features were met by the references.
Presumptions, Conjecture, Evidence, and Puffery
When I first read this decision, I was comfortable with the court’s holding. I generally agree that the USPTO is not in the best position to determine whether a prior art reference is enabling. For the same reason, however, I am uncomfortable with the court’s second-guessing of the evidence that Antor presented to show that the references were not enabling. Of course the USPTO must have some discretion to rejection merely conclusory testimony or testimony that contradicts the plain language of the reference, but beyond that the USPTO should be cautious about substituting its own opinion for that of someone skilled in the art.
The implications of this presumption are most troubling in the context of the forward-looking statements that often are found in the conclusion of a scientific journal article. Authors often optimistically characterize the implications of their research, and speculate about the next significant development that their work may support. I hope that the USPTO will not apply the presumption of enablement to such pure puffery.