REPRESENTATIVE CLAIMS MUST BE REPRESENTATIVE

Hyatt v. Dudas, [2007-1050, -1051, -1052, -1053] (December 23, 2008) [GAJARSA, Newman, and Ward] The Federal Circuit affirmed the district court’s remand of the appeal of Hyatt’s twelve patent applications for consideration of each of the claims, rather than consideration of “representative” claims.
DISCUSSION: Hyatt brought four civil actions under 35 U.S.C. § 145 (2000) challenging decisions of the BPAI affirming the rejection of his claims. Hyatt had 2400 claims pending in 12 applications, but the BPAI concluded that Hyatt had separately argued only twenty-one of his claims because these were the only claims that Hyatt had discussed in the “Summary of the Invention” sections of his briefs to the Board. On this basis, the Board selected these twenty-one claims as representative of the approximately 2,400 claims on appeal. Upon consideration of these representative claims, the Board affirmed the examiner’s rejections and thereupon affirmed the rejections of the non-representative claims. The Federal Circuit agreed with the district court that the Board misinterpreted the meaning of “ground of rejection” in section 1.192(c)(7) and, as a result, improperly selected certain claims to be representative of groups of claims that were rejected on different grounds. The Patent Office took the position that “ground of rejection” meant statutory ground of rejection, and thus it could consider whether all claims failed to meet the written description requirement, based upon a representative claim. The Federal Circuit agreed with Hyatt, that the Patent Office also had to consider the reason why the particular claim was rejected.