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

______________________ 

Decided: March 26, 2013

______________________ 

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 appeal, 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 ultimately 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 prosecution 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 triangular 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 application 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 outset that the correctness of the examiner’s § 103(a) rejection 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 upon the difference between the parent and the continua-
6 IN RE: TIMOTHY OWENS

tion’s front panels—namely, the continuation’s introduction 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 examiner’s rejections. 

Owens timely appealed, and we have jurisdiction under 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 provisions of this title relating to patents for inventions shall 

apply to patents for designs, except as otherwise provided.”). 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 continuation 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 substantial 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 written 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 priority 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 Owens 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 application 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 divides 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 design. However, like all amendments made during prosecution, 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 continuation 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 newlyintroduced broken line is, as all parties agree, “unclaimed.” 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 argument 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 believes 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 patentee 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 granted 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) (internal 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, Owens’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 written 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 negative, 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 pentagon 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 Owens’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 unclaimed boundary lines “may” be acceptable when “connecting 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 pentagon’s widest point. However, it seems that such a boundary 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 guidance. 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 unclaimed boundary lines).2

In our view, the best advice for future applicants was 

presented in the PTO’s brief, which argued that unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a 

boundary that already exists, but was unclaimed, in the 

original disclosure. Although counsel for the PTO conceded 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 unclaimed boundary lines generally should affect entitlement 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 comparison’s sake only. We have not considered, and express 

no opinion upon, whether they properly issued.