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Federal Circuit approves MPEP guidelines for written description rejections

June 28, 2007
Post by Blog Staff

The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, is sufficient for an examiner to make out a prima facie case of failure to meet the written description requirement.More detail on Hyatt v. Dudas after the jump.

The case involved five continuation applications by Hyatt with lineages that spanned decades. While prosecuting these applications, Hyatt withdrew all claims and submitted 1,100 new claims. The examiner rejected the new claims on the grounds that the specification did not disclose the particular combination of elements claimed, and thus the claims did not meet the written description requirement of 35 U.S.C. § 112, ¶ 1. Rather than responding to the substance of the claims, Hyatt challenged the adequacy of the prima facie case. The examiner then made the rejection final, and Hyatt appealed to the Board of Patent Appeals and Interferences, which upheld the rejection. Hyatt then challenged this ruling in the U.S. District Court for the District of Columbia pursuant to 35 U.S.C. § 145. The district court determined that a prima facie case of failure to comply with the written description requirement was not shown because the language used was "vague and unspecific." The USPTO appealed this decision to the Federal Circuit.The Federal Circuit began their discussion by noting that the lower court's ruling implicitly found the MPEP guideline to be legally inadequate to establish a prima facie case of failure to meet the written description requirement. The Federal Circuit disagreed. The court noted that the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production," and "need not be a full exposition on every conceivable deficiency of a claim." The court instead held that:

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 court found that this was the standard set forth by MPEP § 2163.04(I)(B), and as a result held the guideline to be adequate for establishing a prima facie case.The court then turned to the facts in the present case. The court noted that the examiner had met the guideline as the deficiency had been identified (explicitly noting that the combination of elements was not supported by the specification) and had even gone so far as to list all of the elements that were required to be combined under the claim. Because the guidelines were met, the examiner had therefore made out a prima facie case of lack of written description. The rejection was thus proper and the district court was reversed.To read the full decision in Hyatt v. Dudas, click here.


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