Patents, patent publications, and even non-patent printed publications are presumptively enabling for anticipation purposes, for all claimed as well as unclaimed subject matter. To make a successful showing of non-enablement and shift the burden back to the PTO to produce rebuttal evidence, one must show that undue experimentation would be required to perform the claimed invention based on the teachings in the prior art and in light of the knowledge of one of ordinary skill in the pertinent art. It is not sufficient to show that the reference does not enable its own invention, as a prior art reference need not enable its full disclosure; it only needs to enable the portions of its disclosure alleged to anticipate the claimed invention.
Background / Facts: The patent at issue is directed to allowing subscribers to access and to receive information – digital media such as music, images, documents, video, and software – stored on information systems over a telecommunications network. On appeal from a re-exam proceeding at the BPAI, Antor argues that the allegedly anticipatory primary reference is not enabling and that the PTO did not submit any rebuttal evidence regarding enablement. Antor acknowledges that patents are presumed enabling and that the PTO may ordinarily decline to produce rebuttal evidence if the Applicant’s evidence is not deemed sufficient, but Antor points out that the document at issue is a non-patent publication.
Issue(s): Whether a non-patent prior art publication, as distinguished from a patent or patent publication, is presumptively enabling during patent prosecution.
Holding(s): Yes. During patent prosecution, an examiner is entitled to reject claims as anticipated by even a non-patent prior art publication 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 non-enablement. The rationale is procedural convenience. An applicant 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.