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CAFC Updates


By September 8, 2022March 7th, 2024No Comments

Hyatt filed U.S. Patent Application No. 08/435,938, which claims priority to applications filed as early as 1983, during the GATT Bubble (i.e., it was a transitional application filed but not yet granted before the Uruguay Round Agreements Act took effect). The PTO stayed examination pending litigation. When instructed to select a number of claims from the ’938 application for examination as part of the PTO’s efforts to manage Hyatt’s approximately 400 pending patent applications, Hyatt (under protest) selected eight claims out of the approximately 200 in that application.  In response to a non-final rejection of those claims, Hyatt entirely rewrote one of the selected claims, sparing only the preambular terms “A” and “comprising.” When, based on the amendments, the Examiner issued a restriction requirement between the originally selected and amended claims, Hyatt filed a complaint alleging that the PTO’s restriction requirement violated the Administrative Procedure Act (“APA”) as arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law since restriction requirements are generally not permitted for transitional applications, and no exception to that rule applied. Hyatt and the PTO both filed motions for summary judgment, and the district court granted the PTO’s motion and denied Hyatt’s motion, so Hyatt appealed. After noting that Rule 129(b)(1)(ii) permits restriction requirements for transitional applications when the examiner has not made a requirement for restriction due to actions by the applicant, the CAFC finds that it was Hyatt’s actions (whether characterized as a failure to disclose or an act of withholding an entirely new species), that prevented the Examiner from entering a restriction requirement. In such circumstances, the CAFC fails to see how the application of Rule 129(b)(1)(ii) due to Hyatt’s inaction was arbitrary, capricious, an abuse of discretion, or contrary to law. The CAFC also agrees with the district court that applying the applicant-action exception to Hyatt’s ’938 application is not inconsistent with Rule 129 since: 1) Rule 129(a) provides no limitations on applying the applicant-action exception and the submission of amendments under Rule 129(a) does not immunize those amendments from the normal course of examination, including restriction; and 2) applying the applicant-action exception to Hyatt’s application is not inconsistent with Rule 129(b)(2). Finding that the applicant-action exception can and did apply in this case, the CAFC affirms the district court’s determination that the restriction requirement for Hyatt’s ’938 application was proper. 

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