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The PTO Is Not Required to Identify Every Conceivable Deficiency in the Claim to Establish a Prima Facie Case of Lack of Written Description

June 28, 2007
Daley, Kathleen A.

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Last Month at the Federal Circuit - July 2007

Judges: Michel (author), Archer, Dyk

[Appealed from: D.D.C., Judge Sullivan]

In Hyatt v. Dudas, No. 06-1171 (Fed. Cir. June 28, 2007), the Federal Circuit reversed the district court, holding that the PTO had set forth a sufficient prima facie basis for rejection of Gilbert P. Hyatt’s claims for failing to satisfy the written description requirement of 35 U.S.C. § 112. In reaching its decision, the Federal Circuit also held that it had jurisdiction to hear the appeal, notwithstanding that the district court had not rendered a final judgment, but had instead remanded forfurther proceedings at the PTO.

This case involved five of Hyatt’s continuation applications “with lineages that can be traced back for decades.” Slip op. at 1. All five of these applications, which share the same specification, generally claim devices of various configurations of electronic components. During prosecution of these applications, Hyatt withdrew the pending claims and replaced them with over 1100 new claims. The PTO rejected a number of these claims for failing the written description requirement, noting that while each individual element was disclosed in the specification, nowhere did Hyatt specify the particular configurations or combinations of elements claimed. The PTO relied on and followed M.P.E.P. § 2163.04(I)(B) to set forth the basis for its initial rejection, i.e., the PTO’s prima facie case. Rather than respond to the rejection on the merits, Hyatt challenged the propriety of the PTO’s prima facie case. Unpersuaded by Hyatt’s response, the PTO made a final rejection. Hyatt appealed to the Board, which upheld the rejection.

“In the context of the written description requirement, an adequate prima facie case must . . . sufficiently explain to the applicant what, in the examiner’s view, is missing from the written description.” Slip op. at 7. “A statement of a prima facie case need not be a full exposition on every conceivable deficiency of a claim.” Id. at 6.

Hyatt then filed an action under 35 U.S.C. § 145 in the district court to challenge the Board’s decision. The district court agreed with Hyatt, held that the PTO’s explanation of its prima facie case was inadequate, and remanded to the PTO for further prosecution. The PTO appealed to the Federal Circuit.

The Federal Circuit initially addressed the issue of whether it had jurisdiction over the appeal because the district court had not entered a final judgment, but instead had remanded to the PTO for further prosecution. It noted that a court generally does not have jurisdiction when a final judgment has not been entered. The Court observed, however, that an exception to the final judgment rule exists “where denying appellate review would likely result in the permanent loss of the agency’s ability to appeal.” Id. at 4. The Court held that this case presented such a situation because if it were to deny review, the PTO will likely permanently lose its ability to appeal on the issue of whether or not meeting the requirements of M.P.E.P. § 2163.04(I)(B) forms a proper and adequate basis for a prima facie case. As a result, the Court concluded that it had jurisdiction over the appeal.

With respect to the merits of the appeal, the Federal Circuit observed that the PTO is not required to identify every deficiency in the claims to establish an adequate prima facie case. Instead, it only needs to “sufficiently explain to the applicant what, in the examiner’s view, is missing from the written description.” Id. at 7. The Court noted that the PTO has expressed this requirement in M.P.E.P. § 2163.04(I)(B) and held that § 2163.04(I)(B) as written is a lawful formulation of prima facie standard for a lack of written description rejection. The Court explained that the only thing the PTO can reasonably be expected to do is to point out the nonexistence of written description and that § 2163.04(I) expressly instructs the examiner to specify which claim limitation is lacking adequate support in the written description.

Applying these principles, the Court held that the examiner’s initial rejection complied with § 2163.04(I)(B) because the examiner not only explained that the written description failed to support the specific claims combinations, but also listed each element of the allegedly unsupported combination. The Court observed that the examiner specifically noted that the lack of adequate description applied to the claimed combination, not to the individual elements of the combination. According to the Court, the burden then properly shifted to Hyatt to respond to the examiner’s rejection and Hyatt could not avoid that burden by only challenging the PTO’s position that it had properly established a prima facie case. Because Hyatt refused to properly and timely respond, the Court concluded that the PTO properly rejected the claims.