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Archived updates for Monday, July 02, 2007

Indefiniteness for Failure to Support Linkage of Elements

In Hyatt v. Dudas (June 28, 2006), the Federal Circuit held that an adequate prima facie case for rejection under the written description requirement exists where the Examiner asserts that the application fails to "provide support for the linkage of the claimed elements creating the embodiment:"
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. And the
examiner was explicit that 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

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

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

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