In re Owens
710 F.3d 1362 (2013)
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Rule of Law:
A design patent continuation application claiming a smaller portion of a design element disclosed in a parent application does not satisfy the written description requirement if the parent application's drawings did not reasonably convey to a person of ordinary skill in the art that the inventor possessed the newly claimed, smaller portion as a distinct invention at the time of the parent filing.
Facts:
- In 2004, Timothy S. Owens filed an initial design patent application ('709 application) for a bottle.
- The drawings in the '709 application depicted several design features, including an undivided pentagonal panel on the bottle's center.
- The design from the '709 application was eventually granted as a patent ('515 patent).
- Owens sold bottles embodying the patented design.
- In 2006, Owens filed a continuation application ('172 application) seeking to claim only specific portions of the original design.
- In the '172 application, Owens introduced a new broken line that bisected the previously undivided pentagonal panel, thereby claiming only the upper, trapezoidal portion of that panel.
- The original '709 application drawings contained no line, seam, contour, or other feature that corresponded to the new broken line.
Procedural Posture:
- Timothy S. Owens filed the '172 continuation application at the U.S. Patent and Trademark Office (PTO), seeking the priority date of his earlier '709 application.
- The PTO examiner rejected the '172 application for lack of written description under 35 U.S.C. § 112, ¶ 1, and as obvious under § 103(a), denying it the benefit of the earlier filing date.
- Owens appealed the examiner's decision to the PTO's Board of Patent Appeals and Interferences ('Board'), which is an administrative appellate body.
- The Board affirmed the examiner's rejections.
- Owens (appellant) appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a design patent continuation application, which claims only a portion of a larger design element disclosed in the parent application by introducing a new broken boundary line, satisfy the written description requirement of 35 U.S.C. § 112, ¶ 1, to gain the benefit of the parent's earlier filing date when the original disclosure gave no indication that this specific portion was a distinct feature?
Opinions:
Majority - Prost, Circuit Judge.
No. A design patent continuation application that introduces a new boundary to claim a subsection of a previously whole design element does not satisfy the written description requirement unless the original disclosure reasonably conveyed possession of that specific subsection as a distinct design. The test for sufficiency of a written description is whether the original disclosure reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. In this case, Owens's parent application disclosed a bottle with an undivided pentagonal panel, while the continuation claims only the trapezoidal top portion of that panel. The court found substantial evidence to support the Board's conclusion that nothing in the parent disclosure suggested the top portion of the panel was distinct or separately patentable from the rest of the pentagon. The court distinguished this case from 'In re Daniels,' which involved removing an entire ornamental element, not subdividing a single existing element. Therefore, introducing a broken line to create a new, smaller claimed area constitutes new matter not supported by the parent application, and the '172 application is not entitled to the earlier priority date.
Analysis:
This decision clarifies the limits of modifying design patent claims in continuation applications. It reinforces that the written description requirement prevents applicants from using continuation applications to claim subject matter not contemplated in the original disclosure. The court's holding cautions inventors against arbitrarily subdividing previously disclosed design elements with new boundary lines, establishing that such lines are typically only permissible if they make explicit a boundary that was at least implicitly suggested in the parent application's drawings. This case raises the bar for claiming priority for modified designs, compelling applicants to ensure their initial disclosures are comprehensive enough to support any potential future claims to sub-elements of the design.
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