Michael J. Foycik Jr., Esq.

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A NEW PATENT REEXAMINATION DECISION BY THE CAFC ON JULY 27, 2012 ON PRESUMPTIVE ENABLEMENT
by Miichael J. Foycik
Experienced Patent Attorney
info@internationalpatentservice.com

The CAFC, which is the highest U.S. patent appellate court, has rendered a rare patent reexamination decision on July 27, 2012. I say rare, because it upholds a rejection on reexamination by the Board of Appeals in the U.S. Patent Office, and is listed as "precedential" by the CAFC. Such rejections are uncommon, as is a precedential listing in this type of case. The patent in question relates generally to a method of receiving payment using high speed data transmission to communicate with subscribers on a network.

The case is In Re Antor Media Corporation, and is a review of reexamination Nos. 90/007,839, 90/007,936, 90/007,957, and 90/009,261. The U.S. Patent in question is 5,734,961, and contains the claims that were rejected as anticipated and obvious over four cited references. The lower decision was rendered by the BPAI (Board of Appeals and Patent Interferences).

The main question relates to an argument that a prior art publication, as compared with a prior art patent, is presumptively enabled. This is important since such a presumption effectively shifts the burden of proof to the patent owner instead of the U.S. Patent Office. In a prior decision, the CAFC had already held that issued U.S. patents are "presumptively enabled."

The main prior art in this appeal related to a printed publication with is not a patent publication. The holding in this case is that the printed publication is also presumptively enabled. This requires the patent holder in this reexamination to show that "undue experimentation" would have been required to implement the prior art publication taking into account the level of skill in that art. Here, the level of skill was held to be high, which in my opinion virtually precludes a finding of non-enablement.