# United States **Court of Appeals**  **for the Fe d**  **eral Circuit**

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I N RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, AND PHILIP E. HAGUE

.

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2012

- 1261

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Appeal from the U nited State s 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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P ERRY J. S AIDMAN , Saidman DesignLaw Group, LLC, of Silver Spring, Maryland, argued for appellants. Of counsel on the brief was D AVID M. W EIRICH , The Procter & Gamble Company, of Cincinnati, Ohio.

W ILLIAM L A M ARCA , Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were R AYMOND T. C HEN , Solicitor and L YNNE E. P ETTIGREW , Associate Solicitor. Of counsel was S COTT W EIDENFELLER
, Associate Solicitor.

T RACEY -G ENE G. D URKIN , Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, for amicus c uriae.IN RE : TIMOTHY OWENS 2

With her on the brief were D AVID K. S. C ORNWELL
, J ON E. W RIGHT and J ONATHAN M. S TRANG

.

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Before P ROST
, M OORE
, and W ALLACH
, Circuit Judges.

P ROST
, Circuit Judge

.

Timothy S. Owens, et al. (“Owens”) appeal a decision of the Un ited 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 pate nt application, U.S. Design Patent App lication 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 a ppeal, is a continuation of U.S. Design Patent App li cation No. 29/219,709 (filed Dec. 21, 2004) (“’709 applic a tion”)

. The ’709 application claimed a design for a bottle with bound a ries set forth in the figures below:INRE : TIMOTHY OWENS 3

’709 application Figs. 1

– 3. The ’709 application ultimat ely issued as U.S. Design Pat ent No. D531,515 (issued Nov. 7, 2006) (“’515 patent”), and that issuance is not contes ted here.

Owens then filed t he ’172 application in 2006, seeking the benef it of the ’709 a pplic a tion’s 2004 priority date under 35 U.S.C. § 120. Owens conceded during prosec ution that

, if denied the earlier effec tive filing date, the ’172 application would be u n patentable because he had sold bottles e m bodying his design more than one year before filing his continuation. Board Op. at 3- 4.

The ’172 application claimed certain design el e ments found on the top and si de portion s of the original bottle, as depicted in Fi g ures 1 through 3:IN RE : TIMOTHY OWENS 4

’172 application Figs. 1

– 3 (as amended Oct. 29, 2008). In particular, the ’172 application claim ed three design ele ments : ( 1) the small crescent

- shaped area on the front and back of the bottle near the cap; ( 2) the narrow tria ngular areas along the bot tle’s “shoulders;” and ( 3) a n
upper portion of the bottle’s pentagonal center panel

. To ind i cate what portion of the center area was claimed

, Owens bisected the top of his pe n tagonal p anel 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 defi n ing an entirely new “trapezoidal ”- shaped surface that was considered new

ma t ter:INRE : TIMOTHY OWENS 5

J.A. 162. The examiner found no evidence that Owens originally possessed such a trapezo i dal region in the ’709 application . As such, the examiner re jected the ’172 application for lack of written description under
35 U.S.C. § 112, ¶ 1, and furthermore rejected the appl ication as unpa t entabl y obvious in view of the earlier

- sold bottles under 35 U.S.C. § 103(a)

. Owens appealed to the Board, which noted at the ou tset that the cor rectness of the e xami ner’ s § 103 (a) reje ction 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 appl i cation 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 u pon the difference between the parent and the continu a-IN RE : TIMOTHY OWENS 6

tion’s front panels

— namely, the continuation’s introduction of a broken line bisecting the parent’s pe n tagonal front panel. Board Op. at 11. Like the examiner, the Board unde r stood this to indicate that Owens had claimed previously undisclosed “ trapezo i dal sections occupying part, but not all, of the surface area of the front and back panel s.” Id

. A ccordingly , the Board affirmed the exami ner’s rejections.

Owens timely appeal ed, and we have jurisdiction u nder 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.

II

The statutory provision governing the effective filing d ate 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 prov isions of this title relating to patents for inventions shall apply to patents for designs , except as otherwise provi ded. ”). Entitlement to priority under § 120 is a ma t ter 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 co ntinuation must comply with the written d e scription requirement of 35 U.S.C. § 112, ¶ 1. 35 U.S.C. § 120 ; Daniels , 144 F.3d at 1456. Whether a claimed invention is su p ported by an adequate written description under § 1 12, ¶ 1, is a question of fact that we review for substa ntial 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 ei ther a design or a utility patent, has been expressed as “whether the discl o sure of the application relied upon reasonably conveys to thoseINRE : TIMOTHY OWENS 7
skilled in the art that the inventor had possession of the claimed subject matter as of the filing d ate. ” Id

. In the context of design patents, the drawings provide the wri tten descri p tion 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 t han the drawings

. ”). Thus, when an issue of prior ity arises under § 120 in the context of design patent

pros e cution, one looks to the drawings of the earlier application for discl o sure 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 O wens introduced in his continuation application. T he parties agree that the parent application discloses no bou ndary that corresponds (either explicitly or impli c itly)

to this newly

- added broken line

. However, the parties also agree that a design patentee may , under certain circumstances, introduce via amen d ment a straight broken line without adding new matter, ev en “[w]here no [corresponding] boundary line is shown in a design appl ication as originally filed .” MP EP § 1503.02.
The parties refer to these broken- line boundaries as “unclaimed boundary” lines because the lines are “not
in tended to form part of the c laimed design” and do “not exist in reality in the article embodying the design.” Id. Rather, when an unclaimed bound a ry line is introduced via amendment or continuation, it is “understood that the claimed design extends to the [u n claimed] boundary but d oes not include the [u n claimed] boundary.” Id

. In other words, when an unclaimed boundary line d ivides a previously claimed area, it indicates that the appl i cant has disclaimed the portion beyond the boundaryIN RE : TIMOTHY OWENS 8

while claiming the area within it . Where pe rmissible,

un claimed boundary lines allow the patentee to adjust his patent coverage and encompass embod i ments that differ slightly but insignificantly from the originally

- filed d esign. However, like all amendments made during pros ecution, these lines mus t 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 p atentability, Owens needed to demonstrate prior possession of a bottle with a trapezo i dal 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.

Inste ad, Owens attacks the very notion that his co ntinuation 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 h is newly

introduced broken line is , as all parties agree

, “u nclaimed.” Accor d ingly , he believes the Board applied the

wrong wri t ten description test to his case

, one which erroneously treated his unclaimed boun d ary as though it

w as claimed.

1 In initial design applications, it is appropriate to disclaim certain design elements using broken lines, provi d ed the application makes clear what has been claimed. See I n re Zahn , 617 F.2d 261, 26 6-6 7 (CCPA 1980); I n re Blum , 374 F.2d 904, 907 ( CCPA 1967). These

so

- called “environmental” lines are not at issue in this case, b e cause they do not implicate § 120.INRE : TIMOTHY OWENS 9

Owens suggests a more relaxed written description

test for these cir cumstances based upon his interpret a tion of In re Daniels . In that case, we held that a co n tinuation application claiming a design for a container was entitled to the effective filing date of its parent applic a tion , which claimed the same container decorated with an orn a mental floral design. Daniels

, 144 F.3d at 145 4- 55. We reasoned that the underlying container claimed in the continuation was “clearly visible in the earlier design application, demo n strating to the artisan viewing that application that M r. 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 po r tions of his pentagonal front panel were “clearly visible” in the ’ 709 applicati on

. His arg ument 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 b elieves he should now be permitted to disclaim any portion of his origina l design in a continuation and still su r vive the written description test

. Owens misconstrues our holding in Daniels . T he p atentee in Daniels did not introduce any new unclaimed lines, he r emoved an entire design element. I t does not follow from Daniels that an applicant, having been gran ted a claim to a partic u lar design element

, may proceed to subdivide th at element in subsequent co n tinuations however he pleases

. Moreover, the written description question does not turn upon what has been disclaimed

, but instead upon wh ether 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) ( inte rnal quot a ti on marks omitted ) ; Daniels , 144 F.3d at 1456 (“The [written descri p tion] inquiry is simply to determineIN RE : TIMOTHY OWENS 10

whether the inventor had posse s sion at the earlier date of what was claimed at the later date.”)

. In this case , O wens’s parent application discloses a design for a bottle with an undivided pentag o nal center

- front panel , whereas the continuation claims only the trapezo i dal top portion of that center- front panel . Therefore, the question for wri tten description pu rposes is whether a skilled artisan would r ecognize upon reading the pa r ent’s disclosure that the trapezoidal top porti on of the front panel might be claimed separately from the r e mainder of that area

. Ariad , 598 F.3d at 1351.

T he Board answered this factual question in the neg ative , 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 t op trapezoidal portion of the panel from the rest of the pe ntagon in any way. Indeed, Owens did not argue to the

co n trary before the Board, nor does he do so on appeal. Accordingly, we must affirm the Board’s decision

. V

Lastly, w e turn to a question r aised implicitly in O wens’s appeal and explicitly in amicus briefing

— whether

, and under what circu m stanc es, Owens could introduce an unclaimed boun d ary 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 u nclaimed boundary lines “ may ” be acceptable when “co nnecting the ends of existing full lines.” MPEP § 1503.02

. Were this the rule , it might be accept a ble for Owens to bisect his fron t panel with a broken line along the pent agon’s widest point. However, it seems that such a boun dary would simply outline a larger tr apezoid al area, and soINRE : TIMOTHY OWENS 11

the resul t ing claim would suffer from the same written description problems as the ’172 appl i cation

. Prior PTO practice offers similarly ambiguous gui dance

. For instance, the amicus brief noted ce r tain past allowances that seemingly co n tradict both the MPEP and the PTO’s rejection of the Owens continu ation

. Compare the ’702 application

, and the ’172 applic ation, with U.S. Pat ent No. D545,954 (issued July 3, 2007) (parent design patent claiming humidifier)

, and U.S. Pat ent No. D569,958 (issued May 27, 2008) (continuation allowed despite having areas of humidifier bisected with u nclaimed boundary lines ). 2

In our view, t he best advice for future applicants was presented in the PTO’s brief, which argued that u nclaimed bounda ry lines typically should satisfy the wri tten d e scription requirement only if they make explicit a boundary that already exists, but was u n claimed, 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 appl i cations will be evaluated according to it.

This rul e comports with our understanding of how u nclaimed boundary lines generally should affect entitl ement to an earlier filing date under § 112, ¶ 1, and § 120

. I ts impl i cations 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 co mparison’s sake only . We h ave not considered, and express no opinion upon, whet h er they properly issued.