In re Daniels
144 F.3d 1452 (1998)
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Rule of Law:
A later-filed design patent application is entitled to the filing date of an earlier-filed application under 35 U.S.C. § 120 when the earlier application's drawings clearly disclose the underlying design of the article of manufacture, even if the later application removes superficial surface ornamentation present in the original.
Facts:
- On June 22, 1992, Scott J. Daniels filed a design patent application for a device called a 'leecher,' which is used to trap leeches.
- The drawings in this initial application depicted the leecher with a decorative pattern of leaves on its surface.
- While the application was pending, a marketing brochure was published that showed the leecher with the leaf pattern.
- On April 1, 1994, Daniels filed a continuation design application for the same leecher.
- In this second application, Daniels directed the patent office draftsman to remove the leaf pattern from the drawings, showing only the underlying, unadorned structure of the leecher.
Procedural Posture:
- Scott J. Daniels filed an initial design patent application ('parent application') with the U.S. Patent and Trademark Office (PTO).
- Daniels later filed a continuation application with modified drawings.
- The PTO examiner rejected the continuation application, finding it unpatentable for obviousness in view of an intervening publication.
- The examiner denied the continuation application the benefit of the parent application's earlier filing date.
- Daniels appealed the examiner's rejection to the Board of Patent Appeals and Interferences (the Board).
- The Board affirmed the examiner's decision, holding that the modified design was 'new and different' and thus not entitled to the earlier filing date.
- Daniels (appellant) appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does removing surface ornamentation from the drawings in a continuation design patent application preclude the applicant from claiming the priority date of the parent application under 35 U.S.C. § 120, on the grounds that the parent application fails to provide a sufficient written description of the unadorned design?
Opinions:
Majority - Pauline Newman
No. Removing surface ornamentation in a continuation design patent application does not preclude the applicant from claiming the parent application's priority date, because the underlying design claimed in the later application was adequately disclosed in the parent application. The test for whether a later application is entitled to an earlier filing date under § 120 is whether the disclosure of the parent application reasonably conveys to an artisan that the inventor had possession of the later-claimed subject matter at the time of the initial filing. For design patents, the drawings serve as the written description. Here, the leecher as an article of manufacture is clearly visible in the parent application's drawings, and the leaf ornamentation did not obscure the underlying design. The Board of Patent Appeals and Interferences erred in holding that any change to a design creates a new and different design that defeats a priority claim as a matter of law, as this is contrary to the principle that common subject matter is entitled to priority.
Analysis:
This decision clarifies that the written description requirement for design patent continuation applications focuses on the disclosure of the underlying article, not just the exact ornamental features shown. It establishes the important precedent that inventors can remove non-essential surface ornamentation in a continuation application to claim the broader shape of the article without losing their original priority date. This provides inventors greater flexibility to refine claim scope during prosecution and prevents competitors from avoiding infringement by simply using the same underlying design without the specific ornamentation. The case reinforces that the core inquiry for priority is whether the inventor demonstrated possession of the claimed invention in the parent application.
