Hyatt v. Dudas

United States Court of Appeals for the Federal Circuit

2006-1171

GILBERT P. HYATT,

Plaintiff-Appellee,

v.

Jon W. Dudas, DIRECTOR, PATENT AND TRADEMARK OFFICE,

Defendant-Appellant.

J. Robert Chambers, Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio, argued for
plaintiff-appellee. With him on the brief were Wilma A. Lewis and Michael I. Coe, Crowell
& Moring LLP, of Washington, DC, and Gregory L. Roth, of La Palma, California. Of
counsel were Dennis R. Gallagher, Crowell & Moring LLP, of Irvine, California, and
Richard G. Taranto, Farr & Taranto, of Washington, DC.

John M. Whealan, Solicitor, United States Patent and Trademark Office, of
Arlington, Virginia, argued for defendant-appellant. With him on the brief were Thomas W.
Krause and William G. Jenks, Associate Solicitors.

Appealed from: United States District Court for the District of Columbia

Judge Emmet G. Sullivan
 United States Court of Appeals for the Federal Circuit
2006-1171

GILBERT P. HYATT,

Plaintiff-Appellee,

v.

Jon W. Dudas, DIRECTOR, PATENT AND TRADEMARK OFFICE,

Defendant-Appellant.

__________________________

DECIDED: June 28, 2007
__________________________

Before MICHEL, Chief Judge, ARCHER, Senior Circuit Judge, and DYK, Circuit Judge.

MICHEL, Chief Judge.

The Patent and Trademark Office (“PTO”) appeals an order of the United States

District Court for the District of Columbia in a civil action filed by Gilbert P. Hyatt against

Jon W. Dudas, Director of the PTO, under 35 U.S.C. § 145. See Hyatt v. Dudas, No.

1:03-cv-00108-EGS (D.D.C. Oct. 13, 2005). For the reasons set forth in this opinion,

we reverse.

I. BACKGROUND

Hyatt has filed numerous patent applications and continuation applications since

the 1970s. Five of these are at issue in this case, all continuation applications with

lineages that can be traced back for decades. All five share the same specification, and
they generally claim devices comprising various configurations of electronic

components.

At one stage of prosecution, Hyatt withdrew all of the proposed claims and

substituted over 1,100 new claims based on the same specification. The PTO examiner

initially rejected a number of these claims for failing the written description requirement

of 35 U.S.C. § 112 because while each individual element was disclosed in that

specification, nowhere did Hyatt specify the particular configurations or combinations of

elements claimed. The examiner relied on and followed the PTO’s Manual of Patent

Examining Procedure (“MPEP”) § 2163.04(I)(B) to set forth the basis for this initial

rejection, i.e., the PTO’s prima facie case. In his office action, the examiner chose

representative claims for specific analysis and then concluded that the rest of the claims

at issue suffered the same defect. 1 Hyatt was then directed to respond to the PTO’s

prima facie case.

Rather than respond to the merits of the rejection by explaining where in the

specification the cited combinations of components could be found, Hyatt instead

merely challenged the adequacy of the PTO’s prima facie case. Unpersuaded, the

examiner made final the rejection, and Hyatt appealed to the Board of Patent Appeals

and Interferences (“Board”). The Board upheld the rejection, holding that a prima facie

case had been established. Hyatt then filed a § 145 action in district court challenging

the Board’s decision. The district court held that the PTO’s explanation of its prima

1
Hyatt also challenges the propriety of the PTO’s use of representative
claims. Given that the district court did not make a ruling on this issue, we decline to
address it.

2006-1171 2
facie case for lack of written description was inadequate, and remanded to the PTO for

further prosecution. The PTO then timely filed this appeal.

II. DISCUSSION

The basic question presented in this case is when and how the PTO may require

additional information from an applicant when determining whether to reject an

application based on lack of written description. In Star Fruits S.N.C. v. United States,

393 F.3d 1277, 1283 (Fed. Cir. 2005), we held that the PTO has the authority to

“compel disclosure of information that the examiner deems pertinent to patentability.” In

order to invoke this authority and place the burden on the applicant, the PTO must first

establish a prima facie case for the rejection. In re Oetiker, 977 F.2d 1443, 1445 (Fed.

Cir. 1992).

The district court held that, in its rejection of the claims at issue for lack of written

description, the PTO “used vague and unspecific language” and had “fallen somewhat

short of its obligation to ‘state clearly and specifically’ its objections to patentability.”

Hyatt, No. 1:03-cv-00108-EGS, slip op. at 19. Thus while the district court’s opinion did

not explicitly hold that MPEP § 2163.04(I)(B) is unlawful, its decision must be

understood to implicitly hold that compliance with that guideline is inadequate as a

matter of law to establish a prima facie case and place the burden on the applicant to

provide further information. The validity of this holding is the issue now before us.

A. Jurisdiction

We first turn to the issue of jurisdiction. This Court has exclusive jurisdiction of

appeals of § 145 actions under 28 U.S.C. § 1295(a)(4)(C). But it is settled law that a

court generally does not have jurisdiction when no final judgment has been rendered,

2006-1171 3
and a remand for further agency proceedings is generally not a final judgment. E.g.,

Cabot Corp. v. United States, 788 F.2d 1539, 1542 (Fed. Cir. 1986) (holding that a

remand to an agency for further findings and proceedings is not a “final judgment” that

could form the basis for this Court’s jurisdiction); see also Smith v. Nicholson, 451 F.3d

1344, 1347 (Fed. Cir. 2006) (“We have determined that a remand order . . . is not

considered a final judgment and hence is usually not appealable.”).

However, certain rare situations require an exception to the otherwise firm final

judgment rule. In Sullivan v. Finkelstein, the Supreme Court held that a district court’s

remand order in a civil action contesting an agency’s determination was “final” and

immediately reviewable on appeal because it was a “judgment” that terminated the

action, set aside the agency’s determination, and would be effectively unappealable at a

later stage. 496 U.S. 617, 625 (1990). While Sullivan addressed an action under 42

U.S.C. § 405(g), this Court has held that the Sullivan rule is more generally applicable.

See Travelstead v. Derwinski, 978 F.2d 1244, 1248 (Fed. Cir. 1992).

We have applied the Sullivan rule judiciously, as the Supreme Court instructed,

and specifically only in those situations where denying appellate review would likely

result in the permanent loss of the agency’s ability to appeal. For example, in

Travelstead, we held that this Court had jurisdiction where a lower court interpreted a

rule of law (a statute), and its remand to the agency compelled the agency to act

contrary to its prior ruling, in effect “deciding that the Secretary could not follow his own

regulations.” 978 F.2d at 1248 (quoting Monongahela Valley Hosp., Inc. v. Sullivan, 945

F.2d 576, 586 (3d Cir. 1991)) (internal quotations omitted); see also Williams v. Principi,

275 F.3d 1361, 1364 (Fed. Cir. 2002) (“[W]e will depart from the strict rule of finality

2006-1171 4
when . . . there [is] a clear and final decision of a legal issue . . . and there must be a

substantial risk that the decision would not survive a remand . . . .”); cf. Winn v. Brown,

110 F.3d 56 (Fed. Cir. 1997) (finding no jurisdiction when the opportunity to appeal

would be preserved after the remand proceeding).

This case presents a similar situation. We understand the district court’s order

as requiring the PTO to offer something more than what § 2163.04(I)(B) requires to

establish a prima facie case of lack of written description and shift the burden to the

applicant. As such, should we deny review, the PTO will likely permanently lose its

ability to appeal whether or not meeting the requirements of § 2163.04(I)(B) forms a

proper and adequate basis for a prima facie case. Under the district court’s order, as

both parties agreed, the PTO here essentially must drop its rejection for lack of written

description because the district court has ruled that the prima facie case it asserted,

relying on § 2163.04(I)(B), is inadequate as a matter of law. Since by law the PTO

cannot appeal its own decision to not reject claims for lack of written description, we

conclude that this case falls under the principle of Sullivan and Travelstead, and as

such, we may properly exercise jurisdiction to review the controlling question of law

here—whether MPEP § 2163.04(I)(B), as interpreted and applied here, is a lawful

standard for the PTO in establishing a prima facie case of lack of adequate written

description and shifting the burden to the applicant to provide further information. 2

2
Although the MPEP “does not have the force of law,” Molins PLC v.
Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995), the MPEP “is made available to
the public and . . . describe[s] procedures on which the public can rely,” Patlex Corp. v.
Mossinghoff, 758 F.2d 594, 606 (Fed. Cir. 1985). Thus the question of whether the
PTO’s practice, reflected in MPEP § 2163.04(I)(B), is lawful under the law of this Circuit
is an important legal issue over which we may exercise jurisdiction under Sullivan and
its progeny.

2006-1171 5
 B. MPEP § 2163.04(I)(B)

The provision of the Patent Act that contains the written description requirement

is 35 U.S.C. § 112. 3 The contours of the written description requirement have been the

subject of many opinions of this Court. But this case presents a different question in

that we are asked to address not whether Hyatt’s proposed claims are actually

supported by an adequate written description in these applications, but rather whether

the PTO must do more than what MPEP § 2163.04(I)(B) provides to establish a prima

facie case of lack of written description in this and every other such case.

As we explained in In re Oetiker, the prima facie case is merely a procedural

device that enables an appropriate shift of the burden of production. 977 F.2d at 1445.

In the prosecution of a patent, the initial burden falls on the PTO to set forth the basis

for any rejection, i.e., a prima facie case. Id. (citing In re Piasecki, 745 F.2d 1468, 1472

(Fed. Cir. 1984)). We recognize that it is important to require the PTO to adequately

explain the shortcomings it perceives so that the applicant is properly notified and able

to respond. Once the applicant is so notified, the burden shifts to the applicant to rebut

the prima facie case with evidence and/or argument. Id.

A statement of a prima facie case need not be a full exposition on every

conceivable deficiency of a claim. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.

2003) (holding that any overlap between a claimed range and one in the prior art is

3
35 U.S.C. § 112 provides, in relevant part:

The specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and
use the same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.

2006-1171 6
sufficient for a prima facie case of obviousness, even if insufficient to render it

unpatentable). Rather, its purpose is simply to provide sufficient notice to the applicant

to facilitate his effective submission of information. Since the applicant is “in the best

position to cheaply provide” information about the purported invention, the PTO’s

authority to shift the burden to obtain this information is crucial to ensure that the PTO is

not “mak[ing] patentability determinations on insufficient facts and information.” Star

Fruits, 393 F.3d at 1284.

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 PTO expressed this requirement in MPEP

§ 2163.04(I)(B). 4 We hold that § 2163.04(I)(B) as written is a lawful formulation of the

prima facie standard for a lack of written description rejection.

Adequate written description means that, in the specification, the applicant must

“convey with reasonable clarity to those skilled in the art that, as of the filing date

sought, he or she was in possession of the [claimed] invention.” Vas-Cath, Inc. v.

Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). When no such description can be

4
MPEP § 2163.04(I)(B) provides:

[The examiner must e]stablish a prima facie case by providing reasons
why a person skilled in the art at the time the application was filed would
not have recognized that the inventor was in possession of the invention
as claimed in view of the disclosure of the application as filed. A general
allegation of “unpredictability in the art” is not a sufficient reason to support
a rejection for lack of adequate written description. A simple statement
such as “Applicant has not pointed out where the new (or amended) claim
is supported, nor does there appear to be a written description of the claim
limitation ‘____’ in the application as filed.” may be sufficient where the
claim is a new or amended claim, the support for the limitation is not
apparent, and applicant has not pointed out where the limitation is
supported.

2006-1171 7
found in the specification, the only thing the PTO can reasonably be expected to do is to

point out its nonexistence. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (holding that

when the examiner alleges that the claimed embodiment is outside the scope of the

specification, he “need only establish this fact to make out a prima facie case”). This is

not to say that the PTO can reject a complex claim with numerous limitations by

summarily declaring that no written description support exists. Rather, section

2163.04(I) expressly instructs the examiner to specify which claim limitation is lacking

adequate support in the written description. MPEP § 2163.04(I)(A) (requiring the

examiner to “[i]dentify the claim limitation at issue”); see also MPEP § 2163.04(I)(B)

(recommending a rejection in the form “there [does not] appear to be a written

description of the claim limitation ‘____’ in the application as filed”). These provisions

guiding the examiner thus comport with our Alton opinion.

Here, we hold the examiner’s initial rejection complied with § 2163.04(I)(B),

followed Alton, and accomplished the aims of the prima facie case. For example, in

rejecting application claim 163, the examiner explained that the written description did

not support the particular claimed combination of elements, even listing each and every

element of the allegedly unsupported combination. 5 And the examiner was explicit that

5
The examiner stated:

For example, no where [sic] in the present specification is an embodiment
specifically discussed having all of the elements of claim 163, namely, “a
television receiver . . .”, “an input memory . . .”, “an input memory writing
circuit . . .”, “an input memory accessing circuit . . .”, “a keyboard circuit . .
.”, “a disk memory . . .”, “an operating system memory . . .”, “an operating
system memory accessing circuit . . .”, “a computer memory . . .”, “a
computer memory accessing circuit . . .”, “a stored program computer . . .”,
“a printer . . .”, “a frame memory . . .”, “a frame memory writing circuit . . .”,

2006-1171 8
while each element may be individually described in the specification, the deficiency

was the lack of adequate description of their combination—he stated, “While each

element may individually be discussed neither the specification nor drawings clearly

support the claimed embodiment as a whole.” Id. (emphasis added). He further

indicated what Hyatt needed to address his concern: “[I]t is not enough that applicant

show where each claimed element resides in the earliest filed application but [he] must

also provide support for the linkage of the claimed elements creating the embodiment.”

Id. (emphasis added).

Hyatt was clearly notified of what exactly the examiner felt was missing by way of

written description. The burden was then properly shifted to Hyatt to cite to the

examiner where adequate written description could be found, or to make an amendment

to address the deficiency. Hyatt cannot avoid addressing the PTO’s concerns by

instead challenging the PTO’s view that the burden was properly shifted. See Star

Fruits, 393 F.3d at 1284 (“So long as the request from the examiner for information is

not arbitrary or capricious, the applicant cannot impede the examiner’s performance of

his duty by refusing to comply with an information requirement which proceeds from the

examiner’s view of the scope of the law to be applied to the application at hand.”).

Here, the examiner’s position was not arbitrary or capricious. Thus, it was incumbent

“a graphics processor . . .”, “a display circuit . . .” and “a television display .
. . .”
* * *
[I]t is not enough that applicant show where each claimed element resides
in the earliest filed application but must also provide support for the
linkage of the claimed elements creating the embodiment.
The elements of claim 163 constituting an embodiment are not
specifically disclosed. While each element may individually be discussed
neither the specification nor drawings clearly support the claimed
embodiment as a whole.

2006-1171 9
upon Hyatt to comply with his responsibilities as a patent applicant so that the PTO

could discharge its duty and finally resolve the allowability of the claims of Hyatt’s

applications at issue. Because he refused to do so at the appropriate time, these claims

were properly rejected.

CONCLUSION

We hold that an examiner, by complying with MPEP § 2163.04(I)(B) and thus our

decision in Alton, sets forth a sufficient prima facie basis for a rejection due to lack of

written description. The decision of the district court that compliance with

§ 2163.04(I)(B) is insufficient to establish a prima facie case and shift the burden to the

applicant must therefore be

REVERSED.

2006-1171 10