Inre: Timothy Owens , 710 F.3d 1362 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE TIMOTHY S. OWENS, SHEILA M. KELLY,
ROBERT M. LYNCH, IV, JASON C. CAMPBELL,
AND PHILIP E. HAGUE.
______________________
2012-1261
______________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Serial No. 29/253,172
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Decided: March 26, 2013
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PERRY J. SAIDMAN, Saidman DesignLaw Group, LLC,
of Silver Spring, Maryland, argued for appellants. Of
counsel on the brief was DAVID M. WEIRICH, The Procter
& Gamble Company, of Cincinnati, Ohio.
WILLIAM LAMARCA, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were RAYMOND
T. CHEN, Solicitor and LYNNE E. PETTIGREW, Associate
Solicitor. Of counsel was SCOTT WEIDENFELLER, Associate
Solicitor.
TRACEY-GENE G. DURKIN, Sterne, Kessler, Goldstein
& Fox, P.L.L.C., of Washington, DC, for amicus curiae.
2 IN RE: TIMOTHY OWENS
With her on the brief were DAVID K. S. CORNWELL, JON E.
WRIGHT and JONATHAN M. STRANG.
______________________
Before PROST, MOORE, and WALLACH, Circuit Judges.
PROST, Circuit Judge.
Timothy S. Owens, et al. (“Owens”) appeal a decision
of the United States Patent and Trademark Office
(“PTO”) Board of Patent Appeals and Interferences
(“Board”), Ex parte Owens, No. 2010-5622 (B.P.A.I. Dec. 1,
2011) (“Board Op.”), affirming a rejection of his design
patent application, U.S. Design Patent Application No.
29/253,172 (filed Feb. 2, 2006) (“’172 application”). For
the reasons set forth below, we affirm.
I
The ’172 application, which is the subject of this ap-
peal, is a continuation of U.S. Design Patent Application
No. 29/219,709 (filed Dec. 21, 2004) (“’709 application”).
The ’709 application claimed a design for a bottle with
boundaries set forth in the figures below:
INRE: TIMOTHY OWENS 3
’709 application Figs. 1–3. The ’709 application ultimate-
ly issued as U.S. Design Patent No. D531,515 (issued Nov.
7, 2006) (“’515 patent”), and that issuance is not contested
here.
Owens then filed the ’172 application in 2006, seeking
the benefit of the ’709 application’s 2004 priority date
under 35 U.S.C. § 120. Owens conceded during prosecu-
tion that, if denied the earlier effective filing date, the
’172 application would be unpatentable because he had
sold bottles embodying his design more than one year
before filing his continuation. Board Op. at 3-4.
The ’172 application claimed certain design elements
found on the top and side portions of the original bottle,
as depicted in Figures 1 through 3:
4 IN RE: TIMOTHY OWENS
’172 application Figs. 1–3 (as amended Oct. 29, 2008). In
particular, the ’172 application claimed three design
elements: (1) the small crescent-shaped area on the front
and back of the bottle near the cap; (2) the narrow trian-
gular areas along the bottle’s “shoulders;” and (3) an
upper portion of the bottle’s pentagonal center panel. To
indicate what portion of the center area was claimed,
Owens bisected the top of his pentagonal panel with a
broken line.
The examiner rejected the ’172 application. The basis
for the rejection was the addition of the broken line, which
the examiner understood as defining an entirely new
“trapezoidal”-shaped surface that was considered new
matter:
INRE: TIMOTHY OWENS 5
J.A. 162. The examiner found no evidence that Owens
originally possessed such a trapezoidal region in the ’709
application. As such, the examiner rejected the ’172
application for lack of written description under
35 U.S.C. § 112, ¶ 1, and furthermore rejected the appli-
cation as unpatentably obvious in view of the earlier-sold
bottles under 35 U.S.C. § 103(a).
Owens appealed to the Board, which noted at the out-
set that the correctness of the examiner’s § 103(a) rejec-
tion depended on whether the ’172 application was
entitled to the benefit of the ’709 application’s filing date.
Board Op. at 3-4. That issue, in turn, hinged on whether
the ’709 application contained a written description
sufficient to convey to an ordinary designer that Owens
possessed the subject matter of the ’172 application as of
the earlier filing date. Id. at 4.
Addressing the latter question, the Board focused up-
on the difference between the parent and the continua-
6 IN RE: TIMOTHY OWENS
tion’s front panels—namely, the continuation’s introduc-
tion of a broken line bisecting the parent’s pentagonal
front panel. Board Op. at 11. Like the examiner, the
Board understood this to indicate that Owens had claimed
previously undisclosed “trapezoidal sections occupying
part, but not all, of the surface area of the front and back
panels.” Id. Accordingly, the Board affirmed the examin-
er’s rejections.
Owens timely appealed, and we have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.
II
The statutory provision governing the effective filing
date of the subject matter of continuing applications,
35 U.S.C. § 120, applies generally to design patents as
well as utility patents. See 35 U.S.C. § 171 (“The provi-
sions of this title relating to patents for inventions shall
apply to patents for designs, except as otherwise provid-
ed.”). Entitlement to priority under § 120 is a matter of
law which we review de novo. In re Daniels, 144 F.3d
1452, 1455 (Fed. Cir. 1998) (citing Racing Strollers, Inc. v.
TRI Indus., Inc., 878 F.2d 1418, 1419 (Fed. Cir. 1989) (en
banc)).
To be entitled to a parent’s effective filing date, a con-
tinuation must comply with the written description
requirement of 35 U.S.C. § 112, ¶ 1. 35 U.S.C. § 120;
Daniels, 144 F.3d at 1456. Whether a claimed invention
is supported by an adequate written description under
§ 112, ¶ 1, is a question of fact that we review for substan-
tial evidence. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The test for sufficiency of the written description,
which is the same for either a design or a utility patent,
has been expressed as “whether the disclosure of the
application relied upon reasonably conveys to those
INRE: TIMOTHY OWENS 7
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Id. In the
context of design patents, the drawings provide the writ-
ten description of the invention. Daniels, 144 F.3d at
1456; In re Klein, 987 F.2d 1569, 1571 (Fed. Cir. 1993)
(“[U]sual[ly] in design applications, there is no description
other than the drawings.”). Thus, when an issue of priori-
ty arises under § 120 in the context of design patent
prosecution, one looks to the drawings of the earlier
application for disclosure of the subject matter claimed in
the later application. Daniels, 144 F.3d at 1456; see also
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991).
III
The subject of this appeal is the broken line that Ow-
ens introduced in his continuation application. The
parties agree that the parent application discloses no
boundary that corresponds (either explicitly or implicitly)
to this newly-added broken line. However, the parties
also agree that a design patentee may, under certain
circumstances, introduce via amendment a straight
broken line without adding new matter, even “[w]here no
[corresponding] boundary line is shown in a design appli-
cation as originally filed.” MPEP § 1503.02.
The parties refer to these broken-line boundaries as
“unclaimed boundary” lines because the lines are “not
intended to form part of the claimed design” and do “not
exist in reality in the article embodying the design.” Id.
Rather, when an unclaimed boundary line is introduced
via amendment or continuation, it is “understood that the
claimed design extends to the [unclaimed] boundary but
does not include the [unclaimed] boundary.” Id.
In other words, when an unclaimed boundary line di-
vides a previously claimed area, it indicates that the
applicant has disclaimed the portion beyond the boundary
8 IN RE: TIMOTHY OWENS
while claiming the area within it. Where permissible,
unclaimed boundary lines allow the patentee to adjust his
patent coverage and encompass embodiments that differ
slightly but insignificantly from the originally-filed de-
sign. However, like all amendments made during prose-
cution, these lines must comply the written description
requirement to receive the benefit of priority under
§ 120. 1
IV
Bearing all of this in mind, we turn to the merits of
Owens’s case. The Board rejected the ’172 application
because it believed that, as a prerequisite to patentability,
Owens needed to demonstrate prior possession of a bottle
with a trapezoidal section occupying part, but not all, of
the surface area of the center-front panel. Owens made
no such showing before the Board, nor does he do so on
appeal.
Instead, Owens attacks the very notion that his con-
tinuation claims a trapezoidal-shaped area at all. Owens
insists that in order to claim a new design element, one
must first claim a new boundary. Yet his newly-
introduced broken line is, as all parties agree, “un-
claimed.” Accordingly, he believes the Board applied the
wrong written description test to his case, one which
erroneously treated his unclaimed boundary as though it
was claimed.
1 In initial design applications, it is appropriate to
disclaim certain design elements using broken lines,
provided the application makes clear what has been
claimed. See In re Zahn, 617 F.2d 261, 266-67 (CCPA
1980); In re Blum, 374 F.2d 904, 907 (CCPA 1967). These
so-called “environmental” lines are not at issue in this
case, because they do not implicate § 120.
INRE: TIMOTHY OWENS 9
Owens suggests a more relaxed written description
test for these circumstances based upon his interpretation
of In re Daniels. In that case, we held that a continuation
application claiming a design for a container was entitled
to the effective filing date of its parent application, which
claimed the same container decorated with an ornamental
floral design. Daniels, 144 F.3d at 1454-55. We reasoned
that the underlying container claimed in the continuation
was “clearly visible in the earlier design application,
demonstrating to the artisan viewing that application
that Mr. Daniels had possession at that time of the later
claimed design of that article.” Id. at 1456-57.
Owens believes his amendment satisfies the Daniels
test because all portions of his pentagonal front panel
were “clearly visible” in the ’709 application. His argu-
ment is premised on the notion that an applicant who has
possession of an entire area in a parent application must
likewise possess all parts of the area. He therefore be-
lieves he should now be permitted to disclaim any portion
of his original design in a continuation and still survive
the written description test.
Owens misconstrues our holding in Daniels. The pa-
tentee in Daniels did not introduce any new unclaimed
lines, he removed an entire design element. It does not
follow from Daniels that an applicant, having been grant-
ed a claim to a particular design element, may proceed to
subdivide that element in subsequent continuations
however he pleases.
Moreover, the written description question does not
turn upon what has been disclaimed, but instead upon
whether the original disclosure “clearly allow[s] persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Ariad, 598 F.3d at 1351(second alternation in original) (emphasis added) (inter-
nal quotation marks omitted); Daniels, 144 F.3d at 1456(“The [written description] inquiry is simply to determine
10 IN RE: TIMOTHY OWENS
whether the inventor had possession at the earlier date of
what was claimed at the later date.”). In this case, Ow-
ens’s parent application discloses a design for a bottle
with an undivided pentagonal center-front panel, whereas
the continuation claims only the trapezoidal top portion of
that center-front panel. Therefore, the question for writ-
ten description purposes is whether a skilled artisan
would recognize upon reading the parent’s disclosure that
the trapezoidal top portion of the front panel might be
claimed separately from the remainder of that area.
Ariad, 598 F.3d at 1351.
The Board answered this factual question in the nega-
tive, finding that nothing in the parent application’s
disclosure suggested anything uniquely patentable about
the top portion of the bottle’s front panel. This finding is
supported by substantial evidence because the parent
disclosure does not distinguish the now-claimed top
trapezoidal portion of the panel from the rest of the pen-
tagon in any way. Indeed, Owens did not argue to the
contrary before the Board, nor does he do so on appeal.
Accordingly, we must affirm the Board’s decision.
V
Lastly, we turn to a question raised implicitly in Ow-
ens’s appeal and explicitly in amicus briefing—whether,
and under what circumstances, Owens could introduce an
unclaimed boundary line on his center-front panel and
still receive the benefit of § 120.
The Manuel of Patent Examining Procedure (“MPEP”)
provides some direction in this regard, saying that un-
claimed boundary lines “may” be acceptable when “con-
necting the ends of existing full lines.” MPEP § 1503.02.
Were this the rule, it might be acceptable for Owens to
bisect his front panel with a broken line along the penta-
gon’s widest point. However, it seems that such a bound-
ary would simply outline a larger trapezoidal area, and so
INRE: TIMOTHY OWENS 11
the resulting claim would suffer from the same written
description problems as the ’172 application.
Prior PTO practice offers similarly ambiguous guid-
ance. For instance, the amicus brief noted certain past
allowances that seemingly contradict both the MPEP and
the PTO’s rejection of the Owens continuation. Compare
the ’702 application, and the ’172 application, with U.S.
Patent No. D545,954 (issued July 3, 2007) (parent design
patent claiming humidifier), and U.S. Patent No.
D569,958 (issued May 27, 2008) (continuation allowed
despite having areas of humidifier bisected with un-
claimed boundary lines). 2
In our view, the best advice for future applicants was
presented in the PTO’s brief, which argued that un-
claimed boundary lines typically should satisfy the writ-
ten description requirement only if they make explicit a
boundary that already exists, but was unclaimed, in the
original disclosure. Although counsel for the PTO conced-
ed at oral argument that he could not reconcile all past
allowances under this standard, he maintained that all
future applications will be evaluated according to it.
This rule comports with our understanding of how un-
claimed boundary lines generally should affect entitle-
ment to an earlier filing date under § 112, ¶ 1, and § 120.
Its implications for Owens’s case should be obvious.
CONCLUSION
For the reasons set forth above, we affirm the Board’s
rejection of the ’172 application.
AFFIRMED
2 These humidifier patents are presented for com-
parison’s sake only. We have not considered, and express
no opinion upon, whether they properly issued.