In re Antor Media Corp.

• Decision Date: 27 July 2012
• Docket Number: No. 2011–1465.,90/009,261.,90/007,936,Reexamination Nos. 90/007,839,90/007,942,90/007,957,2011–1465.
• Citation: 689 F.3d 1282,103 U.S.P.Q.2d 1555
• Parties: In re ANTOR MEDIA CORPORATION.
• Court: U.S. Court of Appeals — Federal Circuit

689 F.3d 1282

103 U.S.P.Q.2d 1555

In re ANTOR MEDIA CORPORATION.

No. 2011–1465.

Reexamination Nos. 90/007,839, 90/007,936, 90/007,942, 90/007,957, 90/009,261.

United States Court of Appeals, Federal Circuit.

July 27, 2012.

Thomas A. Lewry, Brooks Kushman, P.C., of Southfield, Michigan, argued for appellant. With him on the brief was Thomas W. Cunningham.

William Lamarca, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia. With him on the brief were Raymond T. Chen, Solicitor, and Robert J. McManus, Associate Solicitor.

Before RADER, Chief Judge, LOURIE and BRYSON, Circuit Judges.

LOURIE, Circuit Judge.

Antor Media Corporation (“Antor”) appeals from the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office (“PTO”) rejecting on reexamination the claims of its U.S. Patent 5,734,961 (the “'961 patent”) as anticipated and obvious over four references. See Ex Parte Antor Media Corp., No. 2010–007531, 2010 WL 4149232 (B.P.A.I. Oct. 20, 2010) (“Board Opinion ”), reh'g denied,2011 WL 1100047 (B.P.A.I. Mar. 23, 2011) (“Rehearing Opinion ”). Because the Board did not err in rejecting the claims as anticipated and obvious, we affirm.

Background

Antor owns the '961 patent relating “to a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network.” '961 patent col.1 ll.15–18. The goal of the '961 patent is to allow 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. Id. col.1 ll.19–21, col.2 ll.64–67, col.3 ll.1–27. Subscribers select information on the central server, which is then compressed and transmitted over the telecommunication network to them, as shown in Claim 1:

1. Method of receiving information from one of a plurality of information systems via a high data rate telecommunication network in response to a request from one of plural subscriber stations, said method comprising the steps of:

initiating a two-way transmission from subscriber computer means of said one of said plural subscriber stations to one of said information systems via said telecommunication network,

outputting on output means of said one of said plural subscriber stations data related to plural information stored at one of said information systems,

selecting at said one of said plural subscriber stations at least one of said information by means of input means of said one of said plural subscriber stations and transmitting a signal identifying said at least one selected information from said subscriber computer means to a selected information system via said telecommunication network,

receiving at said one of said plural subscriber stations from said selected information system digital signals via said telecommunication network, expanding by expansion means said transmitted signals, converting said expanded digital signals into analog signals and delivering said analog signals to transducer means.

Id. col.12 ll.18–42. Claims 3, 7, 15, and 19 also add a “controller” limitation. E.g., id. col.12 l.66—col.13 l.3 (requiring a controller for “controlling each at least one selected information storage means drive to retrieve signals from each at least one selected information storage means”). Four prior art references are relevant to the appeal: Ghafoor, MINOS, Huang, and Barrett.

Ghafoor is a research publication published in 1988. Arif Ghafoor, et. al., A Distributed Multimedia Database System, Dep't of Elec. & Comp. Eng'g, Syracuse University (1988 IEEE) (J.A. 485–91). Ghafoor discloses a multimedia database system to provide multimedia services using a network controller, multimedia servers, a communications network such as a local area network (“LAN”) or a broadband integrated services digital network (“B–ISDN”), and workstations. J.A. 485 (Abstract), 486 col. 2 § 2.3. Ghafoor uses a workstation to display data that can interface over a communication network with a central network controller and multimedia servers. J.A. 486 col. 2 § 2.2. As an illustration, Ghafoor discusses a physician searching a centrally stored patient medical history containing X-rays, CAT scans, and other information. J.A. 485 col. 2.

MINOS is an article published in the Journal of Management Information Systems in 1987. Stavros Christodoulakis & Theodora Velissaropoulos, Issues in the Design of a Distributed Testbed for Multimedia Information Systems (MINOS), Journal of Mgmt. Inf. Sys., Vol. 4, No. 2 (1987) (J.A. 495–508). MINOS discloses a system for storing multimedia digital information on optical disks at a central server accessible by a remote workstation over a network. J.A. 496 (Abstract). The system includes a number of workstations connected over a network (LAN or ISDN), a storage retrieval system, and a query system to search and locate media. J.A. 497 § 1.2, 500–01 § 3. The workstations can browse, zoom, annotate, and format that information. J.A. 496 § 1.1. MINOS also describes providing menus for selecting particular digital media when browsing the available information. J.A. 504 § 4.4, 505 § 4.6.

Huang is a publication reviewing the state of the art in diagnostic imaging from 1988. H.K. Huang, et. al., Picture Archiving and Communications Systems (PACS) for Radiological Images: State of the Art, CRC Critical Reviews in Diagnostic Imaging, Vol. 28, Issue 4 (1988) (J.A. 911–55). Huang discloses a list of developments in the PACS field. J.A. 911–12. As an example, Huang describes a system that allows for the storage and retrieval of radiographic images. J.A. 925 (part IV.A. Introduction). Huang, like Ghafoor, discusses access to patient information—including summaries of that information and a list of available images on the server—using a telecommunications network like a LAN or over greater distances. J.A. 935, 937 (part VI. B. Networks).

Barrett, U.S. Patent 4,918,588, is a computer-based office automation system that retrieves document images and provides an image access subsystem built around a minicomputer connected to a telecommunication network. Id. abstract, col.1 ll.5–8, col.3 ll.24–28, col.3. ll.44–45. Barrett's system allows for indexing of files and searching for documents. Id. col.12 l.65—col. 13 l.8.

The PTO granted ex parte reexamination, merging five separately filed requests. The examiner rejected claims 1–29 based on the above references and their various combinations, and Antor appealed to the Board. Antor argued that the claims of the '961 patent were not anticipated or obvious in light of the four references and that Ghafoor and MINOS were not enabling, relying on the declaration of Dr. Ray Mercer to support that argument. The PTO did not submit any rebuttal evidence regarding enablement. The Board found that Antor had not shown that Ghafoor and MINOS were not enabling and had not shown that their performance required undue experimentation. Board Opinion, 2010 WL 4149232, at *5–8;Rehearing Opinion, 2011 WL 1100047, at *2–6. With regard to anticipation, the Board found that claims 1–3, 5–7, 9, 11–15, 17–19, 21–24, and 26–29 were anticipated by Ghafoor; that claims 1–3, 5–7, 9, 11–15, 17–19, 21–24, and 26 were anticipated by Huang; and that claims 1–3, 5, and 13–15 were anticipated by MINOS. Board Opinion, 2010 WL 4149232, at *8–10. Claims 1–3, 5–7, 9, 11–15, 17–19, 21–24, and 26–29 were held to be obvious over the combination of Ghafoor and Huang. Id. at *10–11. Claim 25 was held to be obvious over Ghafoor and either Barrett or Huang. Id. at *11–12. Finally, claims 1–29 were held to be obvious in view the combination of Barrett and MINOS. Id. at *12. Antor appealed from the Board's decision to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

Discussion

We review the Board's legal conclusions de novo. In re Elsner, 381 F.3d 1125, 1127 (Fed.Cir.2004). We review the Board's factual findings underlying those determinations for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Anticipation is a question of fact reviewed for substantial evidence in an appeal from the Board. In re Gleave, 560 F.3d 1331, 1334–35 (Fed.Cir.2009). Enablement and obviousness, on the other hand, are questions of law, based on underlying factual findings. Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Elsner, 381 F.3d at 1127;Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed.Cir.2002) (“Whether a prior art reference is enabling is a question of law based upon underlying factual findings.”).

I.

We first address Antor's argument that the Board erred by holding that prior art publications cited by an examiner are presumptively enabling during prosecution. A prior art reference cannot anticipate a claimed invention “if the allegedly anticipatory disclosures cited as prior art are not enabled.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed.Cir.2003). As we stated in Amgen, both claimed and unclaimed materials disclosed in a patent are presumptively enabling:

In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed disclosures) in that patent that are at issue. In re Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A.1980) (“[W]hen the PTO cited a disclosure which expressly anticipated the present invention ... the burden was shifted to the applicant. He had to rebut the presumption of the operability...