Fitch Even IP Alert: Federal Circuit Addresses Written Description Requirements for Broadening Design Continuation Applications

Fitch Even IP Alert: Federal Circuit Addresses Written Description Requirements for Broadening Design Continuation Applications

In a recent panel decision, In re Owens [an enhanced version of this opinion is available to lexis.com subscribers], the Federal Circuit addressed the written description requirements for design patents, and explained how the written description requirement should be applied for broadening continuation applications. This decision is of interest to those Fitch Even clients who obtain design patents.

In this decision, Owens, the applicant, had pursued a design patent application for a mouthwash bottle. The design as presented initially was drawn in all solid lines with the exception of the cap. Owens then filed a continuation application and attempted to claim only a portion of the top and sides of the mouthwash bottle. The figures below illustrate the difference between the applications:

Owens did not dispute that the broken line boundary added across the front of the bottle in the continuation application was not present in the original design application:

An examiner at the United States Patent and Trademark Office (USPTO) rejected the application on the grounds that the boundary line constituted new matter. Also, Owens had sold bottles that were similar in design more than one year before the filing date of the continuation application. The examiner rejected the continuation application based on the sale of the bottles. Owens appealed within the USPTO, which affirmed, noting that the correctness of the latter rejection depended on whether the boundary line constituted new matter. Owens then appealed to the Court of Appeals for the Federal Circuit.

On appeal, Owens raised these arguments:

  • Boundary lines are not part of the claimed subject matter, and therefore cannot constitute new matter.
    MPEP §1503.02 states "[a]ny broken line boundary other than a straight broken line may constitute new matter..." thereby implying that addition of a straight boundary line is not new matter.
    An earlier case, In re Daniels, held an amendment to remove a portion of the drawing did not add new matter if it was a reasonably identifiable portion of the original disclosure.

A third party, Method Products, filed an amicus brief in support of Owens. Method Products argued that the USPTO has historically allowed such amendments in later continuation design applications, citing specific examples where addition of such boundary lines had been allowed. Method Products also observed that the USPTO's own "Design Days" conference materials indicate that such an amendment is permissible. Specifically, the USPTO conference materials indicated that the following amendment (on the right) would be allowable in a later case:

Despite the above, the Federal Circuit affirmed. The court held that nothing in the parent application's disclosure suggested anything uniquely patentable about the top portion of the bottle's front panel or, perhaps more importantly, made clear that the now-claimed top portion of the front panel might be claimed separately from the remainder of the design. The court disagreed with Owens that the trapezoidal area delineated by the boundary line was not the subject of the claim in the original application.

Distinguishing the Daniels case, the court observed that in that case 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. The court 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." In other words, the patentee in Daniels did not introduce any new unclaimed lines, but rather had removed an entire design element. The designs at issue in Daniels are shown below:

The court distinguished the Owens applications from the designs at issue in Daniels, holding "[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."

The court then turned to the question of whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel and still receive the benefit of the earlier filing date. After some analysis, the court held 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." The court noted that counsel for the USPTO had conceded at oral argument that he could not reconcile all past allowances under this standard, but had stated that all future applications will be evaluated according to this standard. And under this standard, 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," the court affirmed the rejection of Owens's application.

The Federal Circuit explicitly noted that this decision addressed the addition of broken boundary lines (typically designated with a "dash dot dash" notation) and not broken lines used to illustrate unclaimed environment (typically designated with a "dash dash dash" notation). Thus, the practice of being able to convert solid lines to environmental broken lines and vice versa in later applications is not directly implicated by this ruling.

The Owens decision has certain strategic implications for design patent applicants. For more information, please contact Fitch Even partner Edward E. Clair.

A recent Fitch Even webinar presented by Edward Clair, "How to Get the Most Out of Design Patents," covers various aspects of design patents and includes a discussion of the Owens case prior to the Federal Circuit's decision. A recording of the webinar is available for viewing at no charge and can be accessed through our Webinars page here.

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