Reversing a district court decision, the U.S. Court of Appeals for the Federal Circuit recently held that by complying with MPEP § 2163.04(I)(B), and thus with the Court’s decision in Alton, the U.S. Patent and Trademark Office (USPTO) met its burden to provide a prima facie case of a lack of written description, thus shifting the burden to the applicant. Hyatt v. Dudas, Case No. 06-1171 (Fed. Cir., June 28, 2007) (Michel, C. J.).
Hyatt filed numerous patent applications and continuation applications since the 1970s. Five of these cases were at issue, all continuation applications that could be traced back for decades that shared the same specification and that generally claimed devices comprising various combinations of electronic components. During prosecution, Hyatt withdrew all of the original claims and substituted over 1,100 new claims based on the same specification. The examiner initially rejected a number of these claims for failing to comply with the written description requirement.
The Court noted that a statement of a prima facie case of failure to comply with § 112 "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." The Court reasoned that the applicant is in the best position to provide information about the purported invention, and the USPTO’s authority to shift the burden to obtain this information is crucial to ensure that the patent office is not making patentability determinations on insufficient facts and information. The Court cautioned that "this is not to say that the [US]PTO can reject a complex claim with numerous limitations by summarily declaring that no written description exists." However, the Court noted that, when no such written description can be found in the specification, the only thing the USPTO can reasonably be expected to do is to point out its nonexistence.
The Federal Circuit found that Hyatt was clearly notified of what the examiner felt was missing by the way of written description. For example, in rejecting one of the claims, the examiner was explicit in stating that, while each element may be individually mentioned in the specification, the deficiency was the lack of adequate description of the claimed combination. Thus, the burden of persuasion was shifted to Hyatt to cite where adequate written description was found, or make an amendment to address the deficiency. Because Hyatt failed to comply with the USPTO’s requirement at the appropriate time, the claims were properly rejected.
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