Hyatt v. Dudas (Fed. Cir. 2007)
Under MPEP guidelines, the addition of new claims limitations lightens the examiner’s burden of proving inadequate written description. In particular, Section 2163.04(I)(B) provides for a Section 112 rejection of a newly amended claim where “Applicant has not pointed out where the new (or amended) claim limitation ‘____’ is supported, nor does there appear to be a written description of the claim limitation in the application as filed."
In this case, Gilbert Hyatt had filed a new set of claims in a continuation (claiming priority back to 1970’s) and the examiner rejected those claims for lack of written description. Without arguing the merits, Hyatt focused his appeal on the examiner’s failure to provide a prima facie case — and the legal founding of the MPEP provision.
During prosecution, the PTO is given the initial burden of providing a prima facie case for any rejection. The rejection must include at least some specifics regarding problems with the claims. However, that requirement can be met through an explanation of “what, in the examiner’s view, is missing from the written description.”
MPEP is OK: The CAFC found that MPEP 2163.04(I)(B) is properly written because it requires specific recitation of the problematic claim language (as opposed to a vague general rejection)
[S]ection 2163.04(I) expressly instructs the examiner to specify which claim limitation is lacking adequate support in the written description.
Specifics?: The examiner’s written description rejection asserted that the claimed combination was not adequately described (although each particular element was described). After reviewing the rejection, the CAFC found that the examiner’s focus on “support for linkage” was sufficient to “clearly notif[y Hyatt] of what exactly the examiner felt was missing by way of written description.” This shifted the burden going forward, and consequently, Hyatt is now under a duty to bring-forth the requested descriptive evidence.
- Gilbert Hyatt is known for receiving a broad patent on the microcontroller. (That patent was later invalidated in an interference with TI).
- Before the patent was invalidated, Hyatt received $70 million+ in royalties.
- California wanted Hyatt’s taxes and took the case to the Supreme Court. (California v. Hyatt)