Ex parte Antor Media Corp .

Informative decision only: persuasive authority, not binding precedent. When a patent owner in ex parte reexamination argues that an anticipatory prior art reference is non-enabling, the Board will assess enablement under the Wands factors (quantity of experimentation, direction or guidance, working examples, nature of the invention, state of the prior art, relative skill, predictability, and claim breadth), and a patent owner who only generally cites those factors and offers a conclusory expert declaration without applying them to the facts has not established that the reference is non-enabling. The reference is considered together with the knowledge of one of ordinary skill in the art. No prior Board precedent is named in the text as directly addressing this issue; the Board relied on Federal Circuit enablement authority. For the challenger (the examiner and third-party requesters), the decision means a reference's anticipatory status is not defeated by assertions that it is a forward-looking, architecture-level or equivocal disclosure, and the examiner may rely on the patent's own specification and the level of skill to show enablement. For the patent owner, it means a non-enablement argument must apply the Wands factors to the claims with facts on skill level, quantity of experimentation, predictability and claim breadth, and expert declarations must do the same or will be given little weight. The Board relied on Atlas Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984), In re Wands, 858 F.2d 731 (Fed. Cir. 1988), and In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994). LEGAL TEST OR STANDARD: Enablement of a prior art reference turns on whether it enables one skilled in the art to make and use the claimed invention without undue experimentation, weighed under the Wands factors: "(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims." References are considered together with the knowledge of one of ordinary skill in the art (Paulsen). TRIGGERING FACTS: Ex parte reexamination of U.S. 5,734,961 merged from five requests; the patent owner argued Ghafoor and MINOS were non-enabling prior art, citing equivocal language such as 'should' and 'assume', architecture-only disclosure, undeveloped features, and an expert declaration (Mercer). The patent owner only generally cited the Wands factors, did not address skill level, and relied on features not recited in the claims. KEY QUOTE: "Appellant generally cites the Wands factors (App. Br. 20) but makes no attempt to consider the factors with respect to the present case and does not apply the Wands factors to render a determination of “undue experimentation,” such as the level of skill involved, the quantity of experimentation necessary, the predictability or unpredictability of the art, the breadth of the claims, etc." (Paper not numbered, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board applied Federal Circuit authority: Atlas Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569; In re Wands, 858 F.2d 731; Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326; Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362; and In re Paulsen, 30 F.3d 1475. PRACTICE TIP: When arguing that a reference is non-enabling, walk through each Wands factor with record facts, especially the level of skill and predictability of the art at the time, tie the argument to what the claims actually recite, and make sure any expert declaration states the factual foundation and applies the Wands factors rather than concluding non-enablement.