In re Antor Media Corporation

Unclaimed disclosures in patents carry a presumption of enablement.

Opinion (Lourie): Antor Media Corporation (“Antor”) appealed the Board of Patent Appeals and Interference’s rejection of the “#961 patent” – a method and apparatus patent for a telecommunications device – as anticipated and obvious. Antor argued that the Board erred in holding prior art publications as presumptively enabling. The Court, however, reasoned that because unclaimed disclosures in patents are left unexamined and carry a presumption of enablement, that the presumption must also be made with respect to printed publications that are also left unexamined. Also, because an examiner has no access to experts or laboratories and is not in a position to test prior art for enablement, the burden of proof must remain with the challenging party to show rebuttal evidence of non-enablement. Antor also argued that a research publication by Arif Ghafoor would not have sufficiently enabled a person of ordinary skill to make or use the invention in the #961 patent. Relying primarily on the disclosures by Ghafoor, the Court reasoned that Antor did not show that undue experimentation would be needed to practice the #961 patent. The court also rejected Antor’s argument that the Board failed to consider licenses granted under the #961 patent as consideration of non-obviousness, because, without a showing of nexus, the mere existence of licenses did not overcome the conclusion of obviousness. Antor provided no evidence of nexus, and therefore the Board was correct in its holding. The Board’s decision was AFFIRMED.