Hyatt v. Boone, 146 F.3d 1348, 47 U.S.P.Q. 1428 (Fed. Cir. June 17, 1998).



1. Whether the Board of Patent Appeals and Interferences (The Board) erred  in denying Petitioner's constructive reduction to practice based on the finding that a person of ordinary skill would not have known all the limitations not present in the written description of the count.

2. Whether a party that converted its patent application to a Statutory Invention Registration (SIR) can receive priority on its patent application even though the party cannot receive a patent.


1. No.  The evidence is not sufficient to show that the Board made a clear error in its decision.

2. Yes.  Priority is still attainable even with a SIR.


The contested invention is a computer formed on a single integrated circuit chip.  The interference revolves around a computer chip on which three components are included: a) an integrated circuit main memory storing computer instructions; b) an integrated circuit operand memory storing operands; and c) an integrated circuit processing circuit processing the operands stored by the integrated circuit operand memory in response to the instructions stored in said integrated circuit main memory.
Both parties claimed the benefit of earlier-filed patent applications.  The question is who achieved a constructive reduction to practice resulting from these applications.  A patent application, however, must meet legal requirements of 35 U.S.C. § 120 and 35 U.S.C. § 112.  The Board found that Hyatt's application did not provide the requisite written description.
For an earlier-filed application to be a constructive reduction to practice, the applicant must show possession of the later-claimed invention by including any limitations in the description which would not have been understood by a person of ordinary skill in the art.  After reviewing the evidence concerning the absence of certain limitations in the patent application's written description, the Federal Circuit did not find a clear error in the Board's decision regarding the insufficiency of the written description.

The Federal Circuit modified the Board's decision by holding that Boone had priority.  Due to Boone's application for an SIR, the Board held that Boone could not be awarded priority if he was not entitled to the patent.  The Federal Circuit ruled, however, that "the SIR waiver does not affect the adjudication of priority in resolution of the interference proceeding." Hyatt, 146 F.3d at 1357.

Prepared By: