Hyatt v. United States Patent and Trademark Office, No. 21-2324 (Fed. Cir. 2022)Annotate this Case
During the GATT Bubble–a 1995 application “rush” by applicants who wanted their patent claims to be governed by the pre-35 U.S.C. 154(a)(2) patent term, Hyatt filed the 938 application, which claims priority to applications filed as early as 1983. The PTO completed an initial examination in 2003, but from 2003-2012, stayed the examination of many of Hyatt’s applications pending litigation. In 2013, an examiner instructed Hyatt to select claims for examination as part of efforts to manage Hyatt’s approximately 400 pending applications. Hyatt selected eight of approximately 200 claims in that application. Hyatt responded to a non-final rejection in 2015 with significant claim amendments. The Examiner determined that the amendments shifted seven claims to different species of computer systems and processes and issued a restriction requirement between the originally-selected claims and the amended claims, requiring Hyatt to prosecute his amended claims in a new application.
The Federal Circuit affirmed summary judgment in favor of the PTO. Hyatt failed to disclose claims to a separate invention and attempted to file them years after 1995. Withholding these claims falls within the 37 C.F.R. 1.129 exception to the general rule prohibiting restriction: In an application that has been pending for at least three years as of June 8, 1995, no requirement for restriction shall be made or maintained in the application after June 8, 1995, except where the examiner has not made a requirement for restriction in the present or parent application before April 8, 1995, due to actions by the applicant. Hyatt’s amended claims are subject to the new patent term.