• Hyatt v. Dudas
  • July 9, 2007 | Author: Lawrence M. Sung
  • Law Firm: Nixon Peabody LLP - Washington Office
  • On June 28, 2007, the Federal Circuit reversed the district court’s judgment in a 35 U.S.C. § 145 action that the USPTO failed to establish a prima facie case of inadequate written description when rejecting patent claims that related to various configurations of electrical components. The Federal Circuit stated:

    The provision of the Patent Act that contains the written description requirement is 35 U.S.C. § 112. The contours of the written description requirement have been the subject of many opinions of this Court. But this case presents a different question in that we are asked to address not whether Hyatt’s proposed claims are actually supported by an adequate written description in these applications, but rather whether the PTO must do more than what MPEP § 2163.04(I)(B) provides to establish a prima facie case of lack of written description in this and every other such case.

    [T]he prima facie case is merely a procedural device that enables an appropriate shift of the burden of production. In the prosecution of a patent, the initial burden falls on the PTO to set forth the basis for any rejection, i.e., a prima facie case. We recognize that it is important to require the PTO to adequately explain the shortcomings it perceives so that the applicant is properly notified and able to respond. Once the applicant is so notified, the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument.

    A statement of a prima facie case need not be a full exposition on every conceivable deficiency of a claim. Rather, its purpose is simply to provide sufficient notice to the applicant to facilitate his effective submission of information. Since the applicant is “in the best position to cheaply provide” information about the purported invention, the PTO’s authority to shift the burden to obtain this information is crucial to ensure that the PTO is not “mak[ing] patentability determinations on insufficient facts and information.”

    In the context of the written description requirement, an adequate prima facie case must therefore sufficiently explain to the applicant what, in the examiner’s view, is missing from the written description. The PTO expressed this requirement in MPEP § 2163.04(I)(B). We hold that § 2163.04(I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.

    Adequate written description means that, in the specification, the applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence. This is not to say that the PTO can reject a complex claim with numerous limitations by summarily declaring that no written description support exists. Rather, section 2163.04(I) expressly instructs the examiner to specify which claim limitation is lacking adequate support in the written description. . . .

    Here, we hold the examiner’s initial rejection complied with § 2163.04(I)(B), followed Alton, and accomplished the aims of the prima facie case. For example, in rejecting application claim 163, the examiner explained that the written description did not support the particular claimed combination of elements, even listing each and every element of the allegedly unsupported combination. And the examiner was explicit that while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination—he stated, “While each element may individually be discussed neither the specification nor drawings clearly support the claimed embodiment as a whole.” He further indicated what Hyatt needed to address his concern: “[I]t is not enough that applicant show where each claimed element resides in the earliest filed application but [he] must also provide support for the linkage of the claimed elements creating the embodiment.”

    Hyatt was clearly notified of what exactly the examiner felt was missing by way of written description. The burden was then properly shifted to Hyatt to cite to the examiner where adequate written description could be found, or to make an amendment to address the deficiency. Hyatt cannot avoid addressing the PTO’s concerns by instead challenging the PTO’s view that the burden was properly shifted. Here, the examiner’s position was not arbitrary or capricious. Thus, it was incumbent upon Hyatt to comply with his responsibilities as a patent applicant so that the PTO could discharge its duty and finally resolve the allowability of the claims of Hyatt’s applications at issue. Because he refused to do so at the appropriate time, these claims were properly rejected.