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August 10, 2009

Flat Tire

Douglas J. Shoner had a pneumatic tire design rejected by the PTO over obviousness. Shoner appealed to the CAFC, which affirmed. Shoner's plea (hardly an argument) relied upon reading an unstated limitation into his claim from the spec. "The PTO is required to give claim terms their "broadest reasonable interpretation consistent with the specification," and there is nothing in the specification that would explicitly limit the air chamber to a particular structure... See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.")." (CAFC 2009-1277 non-precedential)

Posted by Patent Hawk at August 10, 2009 9:46 PM | Prior Art



I know you haven't posted the Hyatt v PTO case yet. But did you see that surprising dissent? Moore J. flipping and becoming pro-inventor? Who would have thunk?

My bet is the 2-1 split decision Hyatt case will go en banc and perhaps to the Supreme Court because it is one of first impression on the issue of section 145 admission of evidence and summary judgment.

Posted by: step back at August 11, 2009 3:33 PM

I don't think it has to do with being proinventor. It has to do with being pro "the law". The majority is going out on a limb in that case bringing the APA in to restrict evidence admissibility in a 145 action. I rather hope it does go en banc. I believe that 145 should be your "cure all ills at your expense" action.

At the same time, sure I agree with Michel and Dyke that the guy is an arse for not taking care of it in the first instance, and I wish they'd come down hard on this form of being an arse. But on the other hand the guy had a gazillion rejections to handle. Personally, it seems to me like he should just have filed an RCE and switched things up so that he could just discuss those issues with the examiner. Cheap. Easy. Effective. (if he does have support)

Posted by: 6000 at August 11, 2009 3:48 PM


We're taking this up prematurely, and hopefully Hawk can move these comments to an appropriate new post.

But did you notice we are talking about "Gilbert Hyatt"? That name should not be a new one to folks engaged in patent practice.

Any way, Judge Moore notes that the USPTO did not exactly play nice with poor Mr. Hyatt, exposing him to well over 2,000 rejections of which he overcame all except for a mere 8 (the ones on appeal under sect. 145). I think Judge Moore makes a compelling point about placing too much economic burden on ALL inventors (not just Hyatt) by forcing them to anticipate how much evidence is enough ahead of time before appealing under 145. The majority position appears to be unduly harsh.

As for RCE and talking to the Examiner, I suspect Mr. Hyatt has spoken with his examiner more times than he wishes to count. Note the court's observation that Mr. Hyatt is no stranger to this forum.

Posted by: step back at August 11, 2009 5:03 PM

"2,000 rejections" my gawd! it would be interesting to see how many of them had any colorable merit and how many did not.

Posted by: John Prosecutor at August 16, 2009 1:43 PM


If Patently-O is correct, only 79 rejections remained after Appeal.

That's a 96% examiner rejection rate.

I do not know the correlation to colorable merit.

Posted by: breadcrumbs at August 16, 2009 2:59 PM