Federal Circuit disposition — 2011-1465

United States Court of Appeals
for the Federal Circuit
__________________________
IN RE ANTOR MEDIA CORPORATION
__________________________
2011-1465
(Reexamination Nos. 90/007,839, 90/007,936,
90/007,942, 90/007,957, & 90/009,261)
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
____________________________
Decided: July 27, 2012
____________________________
THOMAS A. LEWRY, Brooks Kushman, P.C., of South-
field, Michigan, argued for appellant. With him on the
brief was THOMAS W. CUNNINGHAM.
WILLIAM L AM ARCA, 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. M C M ANUS ,
Associate Solicitor.
__________________________
Before RADER, Chief Judge, LOURIE and BRYSON , Circuit
Judges.
LOURIE, Circuit Judge.

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IN RE ANTOR MEDIA 2
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 telecom-
munications network. Id. col.1 ll.19–21, col.2 ll.64–67,
col.3 ll.1–27. Subscribers select information on the cen-
tral 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 sub-
scriber computer means of said one of said
plural subscriber stations to one of said in-

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IN RE ANTOR MEDIA 3
formation systems via said telecommuni-
cation network,
outputting on output means of said one of
said plural subscriber stations data re-
lated 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 transmit-
ting a signal identifying said at least one
selected information from said subscriber
computer means to a selected information
system via said telecommunication net-
work,
receiving at said one of said plural subscriber
stations from said selected information
system digital signals via said telecom-
munication network, expanding by expan-
sion 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 stor-
age 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 Univer-

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IN RE ANTOR MEDIA 4
sity (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 net-
work (“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 informa-
tion. J.A. 485 col. 2.
MINOS is an article published in the Journal of Man-
agement Information Systems in 1987. Stavros Christo-
doulakis & Theodora Velissaropoulos, Issues in the Design
of a Distributed Testbed for Multimedia Information
Systmems (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)

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IN RE ANTOR MEDIA 5
(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 re-
trieval of radiographic images. J.A. 925 (part IV.A.
Introduction). Huang, like Ghafoor, discusses access to
patient information—including summaries of that infor-
mation 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 argu-
ment. 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

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IN RE ANTOR MEDIA 6
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).
D ISCUSSION
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 determina-
tions 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 (1938). Anticipation is a ques-
tion 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 (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 inven-
tion “if the allegedly anticipatory disclosures cited as prior
art are not enabled.” Amgen Inc. v. Hoechst Marion

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IN RE ANTOR MEDIA 7
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 enti-
tled 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 op-
posed 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 antici-
pated the present invention . . . the burden was
shifted to the applicant. He had to rebut the pre-
sumption of the operability of [the prior art pat-
ent] by a preponderance of the evidence.” (citation
omitted)). The applicant, however, can then over-
come that rejection by proving that the relevant
disclosures of the prior art patent are not enabled.
Id.
Id. at 1355 (footnote omitted). We then indicated that
that presumption applies in the district court as well as
the PTO, placing the burden on the patentee to show that
unclaimed disclosures in a prior art patent are not ena-
bling. Id. That case, however, did not decide whether a
prior art printed publication, as distinguished from a
patent, is presumptively enabling during patent prosecu-
tion. Id. at 1355 n.22 (“We note that by logical extension,
our reasoning here might also apply to prior art printed
publications as well, but as Sugimoto is a patent we need
not and do not so decide today.”). As the issue regarding
non-patent publications is squarely before the court today,
we now hold that a prior art printed publication cited by
an examiner is presumptively enabling barring any
showing to the contrary by a patent applicant or patentee.

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IN RE ANTOR MEDIA 8
Relying on the presumption of validity accorded to is-
sued patents, 35 U.S.C. § 282, Antor asserts that a pre-
sumption of enablement is applicable only to prior art
patents, not to publications, because “the PTO must
examine [patents] for enablement before they issue, and
35 U.S.C. § 282 says patents are presumed valid.” Antor
Br. 16–17. However, we rejected that argument in Am-
gen:
On appeal, Amgen argues that there should be no
presumption of enablement in this case because
under § 282 courts only presume the claimed sub-
ject matter in a patent is enabled. Thus, Amgen
argues, because only the unclaimed disclosures of
[the prior art patent] are at issue here, no pre-
sumption of enablement should apply. This argu-
ment is not relevant, however, because, as
reasoned below, we do not only rely on § 282 as the
source for a presumption. Instead, relying on our
precedent, we hold a presumption arises that both
the claimed and unclaimed disclosures in a prior
art patent are enabled.
Amgen, 314 F.3d at 1355 (emphasis added). In the prece-
dent cited by Amgen, the court had held the way it did
because it is procedurally convenient to place the burden
on an applicant who 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 cumber-
some, perhaps even impossible, to impose on the PTO the
burden of showing that a cited piece of prior art is ena-
bling. The PTO does not have laboratories for testing
disclosures for enablement.
Unlike claimed disclosures in a patent, unclaimed dis-
closures are thus not examined by the PTO at all. As
these unclaimed, unexamined disclosures still receive a

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IN RE ANTOR MEDIA 9
presumption of enablement during prosecution of a later
patent, there is no reason why printed publications, which
of course also lack the scrutiny of examination, should not
logically receive the same presumption and for the same
reasons. See id. at 1355 n.22.
During prosecution, an examiner is governed by 35
U.S.C. § 132, which requires notification to an applicant
of the reasons for a rejection with “such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application.” Section
132 “does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection.” In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011) (quoting Chester v.
Miller, 906 F.2d 1574, 1578 (1990)). Instead, that statute
only requires that “an applicant at least be informed of
the broad statutory basis for the rejection of his claims, so
that he may determine what the issues are on which he
can or should produce evidence.” Id. In discussing the
theory of the rejection, the prior art basis for the rejection,
and where each limitation of the rejected claims is shown
in the prior art reference, an examiner has met his initial
burden. Id. at 1363 (“[A]ll that is required of the office to
meet its prima facie burden of production is to set forth
the statutory basis of the rejection and the reference or
references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of
§ 132.”). Indeed, as indicated with regard to unclaimed
patent prior art, an examiner, who has no access to ex-
perts or laboratories, is not in a position to test each piece
of prior art for enablement in citing it, and requiring him
to do so would be onerous, if not impossible. An exam-
iner, therefore, is not required to anticipate every possible
response to a rejection, including showing that a cited
reference is enabling.

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IN RE ANTOR MEDIA 10
Consistent with the statutory framework and our
precedent, we therefore hold that, during patent prosecu-
tion, an examiner is entitled to reject claims as antici-
pated by a prior art publication or patent 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 nonenablement.
II.
Turning now to the Board’s decision here, the prima
facie rejections during prosecution put the burden of
proving the nonenablement of Ghafoor, MINOS, Huang,
and Barrett on Antor. Antor argued to the Board that
Ghafoor and MINOS were not enabling disclosures,
relying primarily on the declaration of Dr. Ray Mercer.
Antor did not challenge the enablement of Huang and
Barrett. Because we hold that the Board did not err in
finding that Ghafoor is enabling and anticipates the
appealed claims, we do not address the other overlapping
anticipation rejections relating to MINOS and Huang.
As previously noted, a prior art reference cannot an-
ticipate a claimed invention “if the allegedly anticipatory
disclosures cited as prior art are not enabled.” Amgen,
314 F.3d at 1354. Antor argues that Ghafoor does not
sufficiently enable a person of ordinary skill to make or
use the invention in the ’961 patent because Ghafoor is
“forward looking,” relying on Ghafoor’s use of the term
“should” throughout its disclosure and arguing that
Ghafoor is not enabling as to three specific features of the
’961 claims: “high data rate telecommunication network”;
accessing and retrieving of data; and “a controller.”
The PTO responds that Antor has not met its burden
to show that undue experimentation would be required

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IN RE ANTOR MEDIA 11
for one of ordinary skill in the art to make or use the
invention in the ’961 patent. It argues that forward-
looking language is irrelevant to enablement and that
Antor ignores the level of skill in the art, merely pointing
to some missing details in the Ghafoor disclosure. We
agree with the PTO that Antor has not shown that undue
experimentation would be required to perform the
claimed invention based on the teaching in Ghafoor.
As an initial matter, the mere use of forward-looking
language (such as terms like “should”) does not show one
way or another whether a person of ordinary skill in the
art would have to engage in undue experimentation to
perform the claimed invention. Indeed, undue experimen-
tation is determined based on both the nature of the
invention and the state of the art. See Elan Pharm., Inc.
v. Mayo Found. for Med. Educ. & Research, 346 F.3d
1051, 1055 (Fed. Cir. 2003) (quoting In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988)). The word “should” thus
constitutes a disclosure even if it is only precatory and
does not necessarily convey the meaning of “did.” Thus,
the verb tense and word choice used in a prior art refer-
ence, taken without an understanding of the state of the
art and the nature of the invention, shed no light on
enablement. That reality is consistent with our precedent
holding that the invention in a prior art publication need
not have actually been made or performed to satisfy
enablement. Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen.
Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005); In re
Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
Secondly, Antor argues that Ghafoor does not enable
use of a “high data rate telecommunication network”
connected to servers and workstations. ’961 patent col.12
ll.18–20. Antor points to language in Ghafoor that the
integration of multimedia services in a single broadband
network “poses new communication requirements” not

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IN RE ANTOR MEDIA 12
disclosed by Ghafoor. J.A. 486 § 2.3. In particular, Antor
notes that Ghafoor requires data bit rates up to “200–300
Mbit/sec,” a bit rate far beyond the level of ordinary skill
in 1989 according to Dr. Mercer. Id.; J.A. 450–51 ¶ 11(e).
In addition, Antor points to Dr. Mercer’s testimony that a
skilled artisan would be unable to interface B-ISDN to
Ghafoor’s workstations without undue experimentation.
J.A. 450–51 ¶ 11.
A more thorough review of Ghafoor, however, tells a
different story. Under the section entitled “Communica-
tion Network,” Ghafoor states that “the main function of .
. . [its] network is to interconnect geographically dispersed
servers and users with broadband multimegabit services.”
J.A. 486 § 2.3. Ghafoor then gives an example of using
the “widely supported broadband integrated services
digital network (B-ISDN)” implemented using the “dual
bus Queued Packet and Synchronous Switch (QPSX)”
based network. Id. (emphasis added). QPSX, according
to Ghafoor, is known to have “outstanding reliability”
with support for “arbitrary network size and speed.” Id.
Without qualification or condition, Ghafoor then states
that “such a network can be employed effectively in the
proposed HMD system.” Id. (emphasis added). Ghafoor
adds that its workstations “interface with the communica-
tion network and support communication protocols in
order to interact with the central controller and multime-
dia servers.” J.A. 486 § 2.2. Ghafoor therefore discloses
the use of a “high data rate telecommunications network”
such as B-ISDN that can interface with its workstations.
Moreover, whether the maximum data-bit rates re-
cited in Ghafoor were beyond the level of ordinary skill in
1989 is not the relevant inquiry for enablement. Enable-
ment of prior art requires that the reference teach a
skilled artisan to make or carry out what it discloses in
relation to the claimed invention. See Elan Pharm., 346

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IN RE ANTOR MEDIA 13
F.3d at 1054; Donohue, 766 F.2d at 533; see also Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547,
1551 (Fed. Cir. 1989) (“Even if a reference discloses an
inoperative device, it is prior art for all that it teaches.”).
In other words, 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.
Here, the proper inquiry is whether Ghafoor discloses
using a “high data rate telecommunication network”
connected to servers and workstations as required by the
’961 patent. The ’961 patent discloses an existing “high
data rate digital network”, an ISDN line, capable of
transmission at 64kbits/sec as embodying the invention.
’961 patent col.1 ll.40–44, col.3 ll.63–67. Ghafoor explic-
itly notes that transmission speeds well under 64kbits/sec
were more than adequate to transmit images, graphs,
maps, charts, audio, and text data, all of which are “in-
formation” as claimed in the ’961 patent. J.A. 486 § 2.3;
see, e.g., ’961 patent col.1 ll.19–21 (“The technical field of
the invention is . . . transmitting information such as
sounds, images, or writing.”). Given the disclosure of an
existing ISDN technology in the ’961 patent and the
“widely supported” B-ISDN in Ghafoor, Antor has not
shown that undue experimentation would be needed to
practice the ’961 patent’s claimed “high data rate tele-
communication network” based on Ghafoor’s disclosure.
Third, Antor argues that Ghafoor does not enable ac-
cessing and retrieving of data. While that language does
not appear in claim 1, Antor appears to be referring to the
“selecting . . . at least one of said information” that is later
received by the “subscriber station.” Antor Br. 23 n.2.
Antor argues, based on the declaration of Dr. Mercer, that
the search functionality disclosure in Ghafoor regarding
its hierarchical object graph feature is unintelligible. See
J.A. 453–54 ¶ 15; id. 489–90. According to Antor: “while

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IN RE ANTOR MEDIA 14
Ghafoor identifies a desired result, it does not meaning-
fully disclose how to accomplish that result.” Antor Br.
24. We conclude that Antor’s argument falls short of
showing nonenablement.
As previously discussed, Ghafoor’s disclosure must be
viewed in light of the knowledge of one of ordinary skill in
the pertinent art, which, as the Board found, is “quite
advanced.” See Board Opinion, 2010 WL 4149232, at *6.
Ghafoor discloses “smart terminal” workstations that can
“interface with the communication network” in order to
“interact with the central controller and multimedia
servers.” J.A. 462 § 2.2. That interaction, according to
Ghafoor, allows users to search the database on a central
server from a remote workstation. J.A. 490 § 3.3. While
Ghafoor proposes using a certain hierarchical object graph
structure to accomplish that functionality, the ’961 patent
does not require that specific hierarchical object graph; it
only requires the ability to select and receive information
on the system. ’961 patent col.12 ll.29–42. The hierarchi-
cal object graph in Ghafoor, intelligible or not, does not
lead to the conclusion that a skilled artisan could not
implement some form of selecting and receiving informa-
tion without undue experimentation. Given the high level
of skill in the art, Antor has not shown that undue ex-
perimentation would be needed to practice the ’961 pat-
ent’s claim limitations of selecting and receiving
information in view of Ghafoor.
Fourth, Antor argues that Ghafoor’s disclosure of a
“controller” is not enabling as to claims 3, 7, 15, and 19.
In particular, Antor argues that there is not enough detail
explaining how the controller works in Ghafoor. Antor
Br. 25. Quite to the contrary, Ghafoor discloses two
controllers, a local and network controller, detailing their
functionality, architecture, and database integration. J.A.
486 § 2.2 (HMD Network Controller), 489 (Local Control-

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IN RE ANTOR MEDIA 15
ler). For example, Ghafoor’s network controller deter-
mines the location of stored information, selects servers,
and determines operations to perform on the information,
such as search and retrieval, based on user requests. J.A.
486 § 2.2. According to Ghafoor, the network controller
can be a “uniprocessor having sufficient memory” that
supports various “communication protocols.” Id. The
local controller, on the other hand, must be able to receive
a query and pass on requests to the network controller.
J.A. 488 (Database System), 489 (Local Controller).
Given the high level of skill in the art, Antor has not
shown that undue experimentation would be needed to
practice the claimed “controller” limitation.
Antor next argues that Ghafoor cannot anticipate the
’961 patent’s claims because it does not disclose “data
related to the plural information.” Antor argues that
“data related to the plural information” is not the plural
information stored by the central information system, but
some other data, such as a list of the information avail-
able on the server (i.e., a menu). The PTO responds that
Antor’s reading is too narrow and that any information
output at a workstation is “related” to information on the
central database. As an example, the PTO argues that a
single image transmitted to the workstation is “related” to
the larger set of images on the server. The PTO also
points out that Ghafoor allows a physician to remotely
browse a patient’s medical history and access a summary
of the patient information stored on the central server,
thus meeting Antor’s narrow construction.
We agree with the PTO that Ghafoor discloses “data
related to the plural information.” Ghafoor explicitly
discloses a physician accessing a summary of patient
information on the central server. J.A. 485 § 1 (Introduc-
tion). In doing so, the physician receives a summary of
the patient’s history from which information can be

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IN RE ANTOR MEDIA 16
selected and retrieved. Ghafoor’s system is also able to
browse the patient’s medical history on the server. Id.
Under either party’s definition, the summary of a pa-
tient’s medical history and a listing of the files available
on the server is “data related to the plural information.”
The Board thoroughly reviewed each of Antor’s and
Dr. Mercer’s allegations regarding the enablement of
Ghafoor, and Antor has not rebutted the presumption
that Ghafoor is enabling because it has not shown that
undue experimentation would be needed to practice the
claimed invention. The Board’s rejection of claims 1–3, 5–
7, 9, 11–15, 17–19, 21–24, 26, and 27–29 as anticipated by
Ghafoor is supported by substantial evidence and is
therefore affirmed.
III.
The Board also rejected claims 1–29, including the
claims not covered by the Board’s anticipation rejections,
as having been obvious based on Barrett in view of
MINOS. While Antor argues that MINOS is not enabling
in challenging the Board’s anticipation rejection, MINOS
can still qualify as prior art in determining obviousness
under 35 U.S.C. § 103, independent of enablement. See
Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578
(Fed. Cir. 1991) (“[A] non-enabling reference may qualify
as prior art for the purpose of determining obviousness
under § 103.”). On appeal, Antor raises only one issue
with regard to that combination: that MINOS and Barrett
fail to disclose a high data rate telecommunication net-
work. Thus we review the obviousness rejection on the
sole ground Antor raised in its brief, without regard to
whether MINOS is enabling.
In support of its argument, Antor posits that MINOS
only discloses using a LAN, which Antor argues is not a
telecommunication network. In addition, Antor notes

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IN RE ANTOR MEDIA 17
that MINOS only mentions ISDN twice, and not as a
replacement for the LAN used for data transfer. See J.A.
497. As for Barrett, Antor relies on the PTO’s admission
that Barrett “fails to explicitly disclose” a “high data rate
telecommunication network.” J.A. 648. Antor also faults
the Board for not taking into account Antor’s proffered
secondary consideration of nonobviousness, the existence
of a number of licenses to the ’961 patent.
The PTO responds that nothing in the claims of the
’961 patent prohibits a high data rate LAN from qualify-
ing as a “high data rate telecommunication network,”
especially in light of the fact that the claim language
imposes no distance limitation. The PTO notes that
MINOS also discloses using high-capacity communication
networks such as ISDN. The PTO does not address
whether Barrett discloses a high data rate telecommuni-
cation network, but does mention that Barrett “can be
connected to remotely located workstations via a tele-
communications network.” PTO Br. 10 (citing Barrett,
col.3 ll.44–45). Finally, the PTO notes that the licenses
cited by Antor as having been granted and supporting
secondary considerations of nonobviousness were not in
the record and that Antor failed to establish a nexus
between any specific license and the patented invention.
We agree with the PTO that MINOS discloses using a
high data rate telecommunications network and that
Antor has failed to establish a nexus between its licensing
and the patented invention.
Under the Patent Act, “[a] patent may not be obtained
. . . if the differences between the subject matter sought to
be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.” 35
U.S.C. § 103(a). Although the ultimate determination of

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IN RE ANTOR MEDIA 18
obviousness under § 103 is a question of law, it is based
on several underlying factual findings, including (1) the
scope and content of the prior art; (2) the level of ordinary
skill in the pertinent art; (3) the differences between the
claimed invention and the prior art; and (4) evidence of
secondary factors, such as commercial success, long-felt
need, and the failure of others. Graham, 383 U.S. at 17–
18.
MINOS discloses “high band width local area net-
works (LANs) and optical fiber technology” that “allow for
the effective transfer of . . . large volumes of data.” J.A.
497 § 1.2. MINOS also discloses the use of “high capacity
communication networks” such as ISDN, which Antor
admits is a telecommunication network. Id.; Antor Reply
Br. 12 (“The Director also argues that MINOS discusses
ISDN networks — which are admittedly telecommunica-
tion networks.”). As previously discussed, the ’961 patent
discloses the existence of an ISDN line capable of trans-
mission at 64kbits/sec and as embodying the claimed
“high data rate telecommunication network.” ’961 patent
col.1 ll.40–44, col.3 ll.63–67. A skilled artisan reading
MINOS at the time would have thus known that ISDN
was available, as noted in the ’961 patent, and that
MINOS could work with a variety of types of integrated
telecommunication networks, including ISDN. Therefore,
MINOS, contrary to Antor’s position, discloses using a
high data rate telecommunication network.
With regard to Antor’s argument that the Board failed
to consider licenses granted under the ’961 patent as a
secondary consideration of nonobviousness, it is clear
from the record that the Board did consider the existence
of those licenses. E.g., Board Opinion, 2010 WL 4149232,
at *12. As we have previously held, “without a showing of
nexus, ‘the mere existence of . . . licenses is insufficient to
overcome the conclusion of obviousness.’” Iron Grip

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IN RE ANTOR MEDIA 19
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed.
Cir. 2004) (quoting SIBIA Neurosciences, Inc. v. Cadus
Pharm. Corp., 255 F.3d 1349, 1358 (Fed. Cir. 2000)).
Antor, beyond alleging the existence of a number of
licenses, has not asserted any nexus between the merits
of the invention and the licenses themselves. See In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Antor
merely lists the licensees and their respective sales reve-
nue. The licenses themselves are not even part of the
record. Antor provides no evidence showing that the
licensing program was successful either because of the
merits of the claimed invention or because they were
entered into as business decisions to avoid litigation,
because of prior business relationships, or for other eco-
nomic reasons. The Board was thus correct in holding
that the existence of those licenses is, on its own, insuffi-
cient to overcome the prima facie case of obviousness.
As no other issues have been raised with respect the
Board’s rejection of claims 1–29 as obvious based on the
combination of MINOS and Barrett, we affirm the Board’s
determination.
IV.
We have considered Antor’s remaining arguments and
conclude that they are without merit. Accordingly, the
Board’s decision is affirmed.
AFFIRMED

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