In re Timothy S. Owens, Sheila M. Kelly, Robert M. Lynch, IV, Jason C. Campbell, and Philip Hague

Unclaimed Boundary Lines in a Continuation Design Patent Application May Add New Matter Where the Boundary Was Not Suggested in the Disclosure of the Parent Application

12-1261

March 26, 2013

MacKichan III, Robert C.

Decision

Last Month at the Federal Circuit - April 2013

Judges: Prost (author), Moore, Wallach

[Appealed from: Board]

In In re Owens, No. 12-1261 (Fed. Cir. Mar. 26, 2013), the Federal Circuit held that a broken line in a continuation design patent application, which served only to partition one part of the claimed design along a boundary not suggested in the parent application, created new matter not supported by the parent application.

In 2004, applicant Timothy S. Owens filed U.S. Design Patent Application No. 29/219,709 (“the ’709 application”), claiming the overall design of a bottle related to a line of mouthwashes and rinses. Two years later, Owens filed U.S. Design Patent Application No. 29/253,172 (“the ’172 application”), a continuation application claiming benefit of the ’709 application under 35 U.S.C. § 120. In the ’172 application, Owens claimed specific design elements on the top and side portions of the original bottle. One such feature was a portion of the pentagonal front face of the bottle directly below the bottle’s neck. To indicate what portion of the front panel was claimed, Owens added a broken line bisecting the pentagonal front panel. As a result, the application depicted a trapezoidal area of the front panel just below the bottle’s neck, the broken line comprising the base of the trapezoid:

It was undisputed that the parent application disclosed no boundary (explicitly or implicitly) that corresponded to this newly added broken line.

On the basis of the added broken line, the examiner rejected Owens’s continuation application as containing new matter, namely, the trapezoidal-shaped region created by the boundary line. Since the examiner found no evidence in the parent application that Owens originally possessed such a trapezoidal region, the examiner rejected the continuation application for lack of written description and as obvious, under 35 U.S.C. § 103, in view of bottles sold between the filing of the parent and continuation applications. The Board affirmed, agreeing that Owens’s continuation application claimed previously undisclosed “trapezoidal sections occupying part, but not all, of the surface area of the front and back panels.” Slip op. at 6 (citation omitted).

On appeal, the Federal Circuit first characterized the type of broken line at issue. The Federal Circuit clarified that broken lines contained in initial design patent applications to disclaim certain design elements (“environmental” lines) were not at issue since they do not implicate issues of priority. Instead, the Court explained that the broken line at issue was an “‘unclaimed boundary’ line[],” that is, a line that “divides a previously claimed area” and “indicates that the applicant has disclaimed the portion beyond the boundary while claiming the area within it.” Id. at 7-8.

Owens argued that the unclaimed boundary line served to disclaim part of the entire area of the bottle disclosed in the ’709 application, and that “an applicant who has possession of an entire area in a parent application must likewise possess all parts of the area.” Id. at 9. In support of this contention, Owens relied on In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998), where the Federal Circuit decided that a parent application claimed a container decorated with an ornamental floral design, and the continuation, which claimed the container without the ornamental design, was entitled to the effective filing date of the parent application. The Federal Circuit 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.” Slip op. at 9 (citing In re Daniels, 144 F.3d at 1456-57). Owens argued that the same reasoning should apply to his continuation because all portions of his pentagonal front panel were “clearly visible” in his parent application. The Federal Circuit rejected this argument, reasoning that in In re Daniels, the patentee “did not introduce any new unclaimed lines, he removed an entire design element.” Id. And “[i]t 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.” Id.

Instead of turning on what had been disclaimed, the Federal Circuit explained that, under 35 U.S.C. § 112, the written description question turned on 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.” Id. at 10. The Court affirmed the Board’s finding that such unique patentability was not suggested since “the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way.” Id.

Finally, the Federal Circuit addressed “whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel” and still receive the effective filing date of his parent application. Id. The Court looked to guidance from the MPEP and past PTO practices, but found the direction of both ambiguous. Instead, the Court observed that the best advice for future applicants was a standard adopted by the PTO in its brief 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.” Id. at 11. That standard, the Court concluded, “comports with our understanding of how unclaimed boundary lines generally should affect entitlement to an earlier filing date under § 112, ¶ 1, and § 120.” Id. Accordingly, the Federal Circuit affirmed the PTO’s rejection of Owens’s patent application.

Summary authored by Robert C. MacKichan, Esq.