Written Description: CAFC Finds Prima Facie Rejection

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.

Notes:

• 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)

 

 

Comments

[Malcolm Mooney]

In this case, Gilbert Hyatt had filed a new set of claims in a continuation (claiming priority back to 1970’s)

LOL! So much for "promoting progress."

[SF]

This is an interesting case because the Examiner expressly noted that each element was found in the specification, but the combination was not supported by the specification. Apparently, the applicant argued that a prima facie case was not made and opted not to argue, in the alternative, that each element being in the specification was sufficient written description. If the applicant had made the second argument, I wonder how this case would have turned out. Any thoughts?

[Malcolm Mooney]

"If the applicant had made the second argument [that the mere presence of each element in the specification satisfied written description support for the combination of the elements], I wonder how this case would have turned out. Any thoughts?"

My thoughts are that "written description/enabling" support for a specific combination of elements is per se unsatisfied by the recitation of otherwise unlinked laundry lists in the specification. If you want a claim to a non-obvious species combination (and, given the priority date, this one had better be non-obvious in view of any of the previously issued claims) then it must be set forth explicitly as a combination in the specification, along with instructions for making the combination operative.

[peanut gallery]

Each element being found in the specification is not sufficient to satisfy the Written Description requirement, according to Liebel. In fact, each element being found in the same embodiment in the specification is not sufficient, according to Liebel.

If the claim links to elements, and the specification does not support the linkage, then the written description rejection is good and I have no sympathy for the applicant.

[Malcolm Mooney]

"Each element being found in the specification is not sufficient to satisfy the Written Description requirement, according to Liebel. In fact, each element being found in the same embodiment in the specification is not sufficient, according to Liebel."

Without addressing the "law" you recite here, the phrase "according to the Liebel" is incorrect in both instances. The CAFC expressly stated that its opinion (Liebel II, 2007) did NOT address the issue of whether Liebel's claims were valid under the written description prong of 35 usc 112, para. 1.

[SF]

"'Written description/enabling' support for a specific combination of elements is per se unsatisfied by the recitation of otherwise unlinked laundry lists in the specification."

I think that's true -- and perhaps that's all the specification had. If so, this is a pretty extreme case, unlike most cases in which there is at least some sort of drawing that links the elements in some way. But, unfortunately, we'll never know because the applicant didn't argue the merits.