2012-1261 (Serial No.

29/253,172)

United States Court of Appeals for the Federal Circuit

IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E. HAGUE

Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.

APPELLANTS COMBINED PETITION FOR PANEL REHEARING AND REHEARING EN BANC

Perry J. Saidman SAIDMAN DesignLaw Group, LLC 8601 Georgia Ave., Suite 603 Silver Spring, MD 20910 (301) 585-8601 (301) 585-0138 (fax) and David M. Weirich The Procter & Gamble Company 299 East Sixth Street Cincinnati, OH 45202 (513) 983-4514 (513) 945-2729 (fax) Attorneys for Appellants June 10, 2013
COUNSEL PRESS, LLC (202) 783-7288 * (888) 277-3259 247351

CERTIFICATE OF INTEREST

The undersigned counsel for Appellants certifies the following: 1. The full names of every party represented by me are: Timothy D. Owens, Sheila Marie Kelly, Robert Maurice Lynch IV, Jason Craig Campbell, and Philip Edwin Hague. 2. The name of the real party in interest represented by me is: The Procter & Gamble Company. 3. All parent corporation and any publicly held companies that own 10 percent or more of the stock of the real party in interest represented by me are: None. 4. The names of all law firms and the partners or associates that appeared for the parties now represented by me in the agency or are expected to appear in this court are: Perry J. Saidman, SAIDMAN DesignLaw Group LLC; and David M. Weirich, The Procter & Gamble Company.

TABLE OF CONTENTS Page STATEMENT OF COUNSEL. SUMMARY OF NECESSITY FOR REHEARING I. THE PANEL ERRONEOUSLY LOOKED FOR SOME INDICIA THAT AN UNCLAIMED BOUNDARY IN THE LATER APPLICATION EXISTED IN THE EARLIER APPLICATION.. THE PANELS DECISION DID NOT CONSIDER THE PROPER MEANING OF POSSESSION OF A DESIGN......................... 1 2

II.

III. THE PANEL DECISION IS CONTRARY TO THE COURTS BINDING PRECEDENT IN VAS-CATH...... 10 IV. THE PRINCIPLE IN THIS CASE IS CRITICALLY IMPORTANT TO DESIGN OWNERS..... 13 CONCLUSION...... 14

ii

TABLE OF AUTHORITIES Page(s) Cases Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) ........................ 1, 8-9 8 11 11 12 11

In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998) ................................ Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822) ............................ In re Gosteli, 872 F.2d 1008 (Fed.Cir. 1989)............................................................. Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570 (Fed. Cir. 1985).................................... In re Smith and Hubin, 481 F.2d 910 (CCPA) (1973)...............................................................

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) 1, 4, 10-12, 14 Statutes and Rules 35 U.S.C. 103(a) ......... 35 U.S.C. 112........................................................................................... 9

3, 7, 9 3 5,8 2

35 U.S.C. 119................... 35 U.S.C. 120................. 35 U.S.C. 171........................... Other

In re Owens, Slip Opinion............. 3-5

iii

STATEMENT OF COUNSEL Based on my professional judgment, I believe the panel decision is contrary to the following precedent of this court: 1555 (Fed. Cir. 1991). I believe this petition raises one or more precedent-setting questions of exceptional importance: (1) whether there is any difference between an Vas-Cath Inc. v. Mahurkar, 935 F.2d

unclaimed broken line boundary and a claimed solid line boundary in design patent practice; (2) whether a designer who designs/possesses an entire article of and (3) whether

manufacture also designs/possesses each portion thereof;

consistent application of the patent laws should allow a design applicant to claim in a later application a design of different scope than that claimed in an earlier application, as is common practice in utility patent applications.

June 10, 2013

By: Perry J. Saidman SUMMARY OF NECESSITY FOR REHEARING

This case presents the Federal Circuit with a unique opportunity to establish a meaningful written description framework for design patents, as it has done for utility patents in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

This case is of exceptional importance because the Panel decision greatly limits the ability of design patent owners to protect the full scope of their designs and stop pernicious knock-offs who copy only a portion of a product, an ability that is freely available to utility patent owners. Although 35 U.S.C. 171 requires the same legal provisions apply to utility and design patents, the various frameworks for their application diverge to correspond to their fundamentally different nature. A utility patent protects how an invention works or functions, and compliance with the written description requirement focuses on the words in the specification. A design patent is visual in nature it protects the ornamental appearance of an article of manufacture and compliance with the written description requirement focuses on what is shown in the drawings. The Panel decision of March 26, 2013 fails to properly take this into account and flies in the face of logic. In finding the claimed bottle portion was not disclosed in an earlier application illustrating the full bottle, the Panel did not appreciate the fact that because of the visual nature of the design because you can see in a drawing whats there and whats not there - a designer of ordinary skill would unquestionably recognize that the designer of the full bottle necessarily possessed, i.e., designed, every portion thereof. The Panel erroneously focused on the presence or absence of an unclaimed boundary in the earlier application, rather 2

than whether the claimed bottle portion is visually present in the drawings of the full bottle. It is there for everyone to see no complex analysis is necessary. Although the 112 written description analysis differs for design patents compared to utility patents, there is no reason in logic or law that the two types of patents should be treated differently when it comes to the ability of the inventors to protect different aspects of their inventions. However, the Panel decision does just that, to the significant detriment to inventors of designs. While it is common practice to file continuation applications in utility patents with claims that are substantially different in scope than the parents claims, the Panels decision does not allow the same for design patents. The Panel said as much, noting: Where permissible, unclaimed boundary lines allow the patentee to adjust his patent coverage and encompass embodiments that differ slightly but insignificantly from the originally-filed [i.e., claimed] design. Slip op. at 8 (emphasis added). This Panel decision regarding use of unclaimed boundary lines unfairly limits design owners to obtaining a claim in a continuation application that has essentially the same scope as the claim in the parent application, denying them the full benefit of the patent laws. Under the Panels decision, the same limitation would exist when a design patent applicant seeks during prosecution of a pending application to amend a claim to include an unclaimed boundary. This situation is particularly unfair when the U.S. design application claims priority under 35 U.S.C. 119 to an earlier filed 3

non-U.S. application that depicts the design of the product in all solid lines 1. Under the Panels decision, it would be impossible to amend the U.S. application to add an unclaimed boundary in order to change the scope of the claim. An unduly limiting view of design patent practice is evident from the Panel decision where advice is provided for future design patent applicants: In our view, the best advice for future applicants was presented in the PTOs brief, which argued 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. Indeed, if a boundary line already exists but is unclaimed in the original disclosure, of what purpose would it be to file a continuation application that has another unclaimed boundary in place of the original unclaimed boundary? This statement indicates a fundamental misunderstanding of design patent practice that pervades the Panels decision. Finally, the Panel decision is contrary to its binding precedent Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) that allowed a later application to claim only a portion of a design disclosed in an earlier application. The importance to design patent owners of this case of first impression underscores the need for the clarity that en banc review would provide.

Illustrating the design in all solid lines is a requirement, for example, in design applications filed in China. 4

I.

THE PANEL ERRONEOUSLY LOOKED FOR SOME INDICIA THAT AN UNCLAIMED BOUNDARY IN THE LATER APPLICATION EXISTED IN THE EARLIER APPLICATION There is a critical distinction between a design delineated by an unclaimed

boundary (i.e., a broken line) and one delineated by a claimed boundary (i.e., a solid line). The Panel decision incorrectly assumed they were the same. The subject of this appeal is the broken line that Owens introduced in his continuation application. In re Owens, slip op. at 7. [L]ike all amendments made during prosecution, these [broken] lines must comply [with, sic] the written description requirement to receive the benefit of priority under 120. Id. at 8. In this case, Owenss parent application discloses a design for a bottle with an undivided pentagonal center-front panel, whereas the continuation claims only the trapezoidal top portion of that center-front panel [The Board] finding is supported by substantial evidence 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. Id. at 10. In its preoccupation with the presence or absence in the earlier application of an unclaimed broken line, the Panel misconstrued the essential inquiry: is the claimed design disclosed in the parent? It matters not whether the unclaimed broken line is present in the earlier application. Due to its visual nature, there is a one-to-one mapping between every surface area of the claimed bottle portion and the corresponding surface area in the whole bottle it is geometrically impossible to conclude otherwise. Appellants admit that this would not be the case if the unclaimed broken line was claimed, i.e., was shown by a solid line. This is a critical distinction, and was not appreciated by the Panel. 5

The four figures below clarify this critical point.2

Design patent owners employ broken lines to delineate unclaimed boundaries, and the proper understanding of such broken line boundaries is the key to this case. As labeled below, design patent drawings have several different types of lines that may appear in the drawings: solid lines, broken lines, boundary lines, and shade lines. 6

FIG. A illustrates the entire bottle disclosed in the earlier application in this case. FIG. B is a hypothetical entire bottle that includes a solid line on its front surface which can represent, for example, an edge or break line. FIG. C illustrates the claimed design at issue in this case that includes a broken line (unclaimed) boundary. Finally, FIG. D is a hypothetical claim that illustrates the same surface area as claimed in FIG. C, but with a solid line, i.e., the lower boundary is claimed instead of unclaimed. The Panel decision erroneously interpreted the claimed design, FIG. C, as if it was the claim of FIG. D. The claimed surface area shown in FIG. D along with its claimed solid line boundary would need to be specifically illustrated in FIG. A to provide a written description thereof under 112. It is not. On the other hand, in FIG. C, since the broken line boundary is unclaimed, only the surface area of the bottle above that boundary, i.e., the claimed portion, needs to be found in the earlier application (FIG. A) to satisfy 112. It is visually apparent that the same surface area claimed in FIG. C is also in FIG. A. Now, comparing FIGS. C & D to the hypothetical bottle design shown in FIG. B, it is clear that FIG. B supports FIG. C since FIG. B contains the same surface area as is claimed in FIG. C. However, unlike FIG. A, FIG. B also supports FIG. D, since FIG. B discloses both the surface area and the solid line

itself, both of which are required to support FIG. D. The critical error of the Panel was interpreting Appellants claim as FIG. D rather than FIG. C. The surface area above the broken line boundary in the presently claimed design (FIG. C) is thus visually present in the earlier application (FIG. A) in satisfaction of a proper written description requirement for designs. II. THE PANELS DECISION DID NOT CONSIDER THE PROPER MEANING OF POSSESSION OF A DESIGN Logic and the law must go hand in hand. The Panel properly cited the utility patent written description requirement that the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Turning to design patents, the Panel also properly noted that the drawings provide the written description, and therefore priority under 120 is found when the subject matter claimed in the later application is visually present in the drawings of the earlier application. In re Daniels, 144 F.3d 1452, 1455 (Fed. Cir. 1998). The law thus recognizes that the visual nature of a design requires a different framework for written description. The Panel veered off course in the analysis of that framework.

In the present case, the claimed design was rejected under both 103(a) and 112. The 103(a) rejection was applied in the present case based on the following rationale: The bottle of the admitted prior art shows the design of the entire bottle, as well as the design for all portions of its components. Therefore the appearance of any shape created by an arbitrarily selected portion of the bottle will necessarily find a counterpart having precisely its same design characteristics in the whole bottle design illustrated in D531,515. In whatever way one may divide up the surface of the bottle, the result will be present in the admitted prior art. (A181.)3 (emphasis added) Appellants could not agree more. If the rejection under 103(a) is correct, and in the absence of their priority claim Appellants agree that it is, then when presented with a whole bottle design, logic dictates a designer of ordinary skill would observe not only the whole bottle design, but also any portion of it, including, e.g., the claimed design. Ariad requires the inventor to have possession of the claimed subject matter in the application relied upon to satisfy the written description requirement. Id. Critically, what does possession mean in the context of a design? If the designer designed the entire bottle, of necessity he/she designed every portion of it.

Appellants admitted during prosecution that the claimed design was anticipated by the whole bottle design (of which the claimed design is a part) that was on sale over one year prior to the filing date of the application on appeal, which subsumes an admission that the claimed design is obvious in view of the whole bottle design. 9

And thus every portion of the bottle was possessed by the designer at the time of filing the earlier application. In the earlier application, one is not required to claim the same portion as claimed in the later application, only disclose it as part of the design patent drawings. In other words, although the design claimed in the later application is different in scope from the design claimed in the earlier application, the written description requirement for a visual design should not require foreshadowing that a portion of an earlier design will be claimed later. If it did, then design applicants would undoubtedly resort to burdensome work-arounds to provide specific examples for any later possible claimed design. 4 III. THE PANEL DECISION IS CONTRARY TO THE COURTS BINDING PRECEDENT IN VAS-CATH The written description requirement was thoroughly discussed in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) where the applicant claimed

For example, the original specification would have to include the illustration of many, many different embodiments that would necessarily be speculative about which portion of a claimed product might be knocked-off, leading to enormous initial disclosures that would be exceedingly burdensome on the USPTO to examine (especially given that each design application can only have one claim). As another example, applicants would have to include a design drawing having a plurality of superimposed, intersecting, finely spaced grid lines to form an antecedent basis for converting any of the grid lines to an unclaimed boundary in a later application. These work-arounds would not even be available if the U.S. application has a priority claim to an earlier filed non-U.S. application in which the design is shown in all solid lines, as is the norm. (See fn. 1, supra.) 10

priority in a utility application to the drawings in a prior design application. The Court stated one of the underlying purposes of the written description requirement: [T]o put the public in possession of what the party claims as his own invention so as to guard against prejudice or injury from the use of an invention which [another] party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaserof his infringement of the patent Id. at 1561, quoting Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 434 (1822). In the instant case, a knock-off artist who copies only a portion of a patented design can hardly be characterized as innocent. In the case of a visual design, the prima facie date of the invention (design) of all bottle portions can fairly be held to be the filing date of the earlier application, In re Smith and Hubin, 481 F.2d 910 (CCPA) 1973) (cited with approval in Vas-Cath at 1562). The Vas-Cath decision also relied upon the following particularly pertinent language: Although [the applicant] does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill to recognize that [he or she] invented what is claimed, In re Gosteli, 872 F.2d 1008, 1012 (Fed.Cir. 1989). In the particular facts of Vas-Cath, this Court disagreed with the district court that the earlier design drawings did not provide a written description of the later utility patent claims. Significantly, the utility patent claims at issue in VasCath did not include every feature shown in the design patent drawings. Nevertheless, this Court found that the drawings of the design patent contained an 11

adequate written description of the later claimed utility invention. Similarly, in the instant case, the claimed partial bottle design does not include every feature shown in the earlier design patent drawings; however, the Panel erroneously concluded it was not described in the earlier drawings. Thus, the Panels decision is directly contrary to Vas-Cath. More particularly, the Court in Vas-Cath said that the written description is satisfied by an open-ended utility patent claim that reads on the design patent drawings without reciting each and every feature shown in those drawings. Similarly, in the present case, the claim at issue reads on 5, and thus is supported by, the design drawings in the earlier application without requiring each and every feature shown in those drawings. Id. at 1565. Moreover, in Vas-Cath the Court specifically disagreed with the district courts application of a legal standard that required the design application to necessarily exclude limitations that were not part of the later claimed invention. Id. at 1566. The Court relied on Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570 (Fed. Cir. 1985) in saying: [R]anges found in applicants claims need not correspond exactly to those disclosed in [the] parent application; [the] issue is whether one skilled in the art could derive the claimed ranges from [the] parents disclosure. Vas-Cath at 1567.

This is supported by the Examiners prior art rejection of the partial bottle claim based on a single prior art reference that discloses the whole bottle. 12

In the instant case, a designer skilled in the art could easily derive any portion of the whole bottle, including the claimed portion, from the whole bottle he/she designed as illustrated in the parent. IV. THE PRINCIPLE IN THIS CASE IS CRITICALLY IMPORTANT TO DESIGN OWNERS The marketplace reality is that design innovators spend millions of dollars to create, develop and market aesthetic product designs that are attractive to consumers. Knock-off artists lie in wait to copy the design innovators. Third party pirates offer products having essentially the same appearance, and/or incorporating the most visually arresting design features of the original, for a fraction of the cost invested by the design innovators/inventors. This piracy is not limited to those relatively few products that elicit a wow factor among consumers it applies across the board to all product designs, and even graphical user interfaces. Design patents are very useful against such

industrial piracy. However, if the Panel decision is allowed to stand - imposing severe limitations to the addition of an unclaimed boundary line - the effectiveness of design patents will be very limited. With great frequency, house brand competitors will copy a new bottle design, but not necessarily all of it. Moreover, it is literally impossible to predict with certainty which portion of a newly introduced bottle will be targeted by the copycats. Thus, it is critically important to be able to amend a design claim, or 13

obtain a claim in a continuation application, to cover a portion of the originally disclosed design, namely, that portion that has been copied by the late-comer. The Panels interpretation that an unclaimed broken line added in a continuation application to delineate a portion of exactly the same bottle disclosed in an earlier application is not visually described in the earlier application will enable knock-off artists to run rampant, essentially stealing the best portion of unique and original designs without recourse. Such behavior must be stopped. CONCLUSION The ever-increasing importance of design rights cries out for clarity for design patent Applicants. The visual nature of designs needs to be taken into account in a proper analysis of the written description requirement. This requires an appreciation that a designer who designs a product of necessity possesses that product and each part of it. Moreover, it is essential for Applicants that the Court and the USPTO understand the critical difference between a broken line and a solid line in design patent drawings. Design patent owners are entitled to equal

treatment in the protection of portions of originally disclosed designs akin to those long provided to utility patent owners, bringing design patent law back into alignment with the Courts Vas-Cath precedent.

14

Respectfully submitted, SAIDMAN DesignLaw Group LLC

Perry J. Saidman Attorney for Appellants 8601 Georgia Avenue, Suite 603 Silver Spring, MD 20910 (301) 585-8601

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ADDENDUM

United States Court of Appeals for the Federal Circuit

______________________ IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, AND PHILIP E. HAGUE. ______________________ 2012-1261 ______________________ Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences in Serial No. 29/253,172 ______________________ Decided: March 26, 2013 ______________________ PERRY J. SAIDMAN, Saidman DesignLaw Group, LLC, of Silver Spring, Maryland, argued for appellants. Of counsel on the brief was DAVID M. WEIRICH, The Procter & Gamble Company, of Cincinnati, Ohio. WILLIAM LAMARCA, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were RAYMOND T. CHEN, Solicitor and LYNNE E. PETTIGREW, Associate Solicitor. Of counsel was SCOTT WEIDENFELLER, Associate Solicitor. TRACEY-GENE G. DURKIN, Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, for amicus curiae.

IN RE: TIMOTHY OWENS

With her on the brief were DAVID K. S. CORNWELL, JON E. WRIGHT and JONATHAN M. STRANG. ______________________ Before PROST, MOORE, and WALLACH, Circuit Judges. PROST, Circuit Judge. Timothy S. Owens, et al. (Owens) appeal a decision of the United 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 patent application, U.S. Design Patent Application 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 appeal, is a continuation of U.S. Design Patent Application No. 29/219,709 (filed Dec. 21, 2004) (709 application). The 709 application claimed a design for a bottle with boundaries set forth in the figures below:

INRE: TIMOTHY OWENS

709 application Figs. 13. The 709 application ultimately issued as U.S. Design Patent No. D531,515 (issued Nov. 7, 2006) (515 patent), and that issuance is not contested here. Owens then filed the 172 application in 2006, seeking the benefit of the 709 applications 2004 priority date under 35 U.S.C. 120. Owens conceded during prosecution that, if denied the earlier effective filing date, the 172 application would be unpatentable because he had sold bottles embodying his design more than one year before filing his continuation. Board Op. at 3-4. The 172 application claimed certain design elements found on the top and side portions of the original bottle, as depicted in Figures 1 through 3:

IN RE: TIMOTHY OWENS

172 application Figs. 13 (as amended Oct. 29, 2008). In particular, the 172 application claimed three design elements: (1) the small crescent-shaped area on the front and back of the bottle near the cap; (2) the narrow triangular areas along the bottles shoulders; and (3) an upper portion of the bottles pentagonal center panel. To indicate what portion of the center area was claimed, Owens bisected the top of his pentagonal panel 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 defining an entirely new trapezoidal-shaped surface that was considered new matter:

INRE: TIMOTHY OWENS

J.A. 162. The examiner found no evidence that Owens originally possessed such a trapezoidal region in the 709 application. As such, the examiner rejected the 172 application for lack of written description under 35 U.S.C. 112, 1, and furthermore rejected the application as unpatentably obvious in view of the earlier-sold bottles under 35 U.S.C. 103(a). Owens appealed to the Board, which noted at the outset that the correctness of the examiners 103(a) rejection depended on whether the 172 application was entitled to the benefit of the 709 applications filing date. Board Op. at 3-4. That issue, in turn, hinged on whether the 709 application 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 upon the difference between the parent and the continua-

IN RE: TIMOTHY OWENS

tions front panelsnamely, the continuations introduction of a broken line bisecting the parents pentagonal front panel. Board Op. at 11. Like the examiner, the Board understood this to indicate that Owens had claimed previously undisclosed trapezoidal sections occupying part, but not all, of the surface area of the front and back panels. Id. Accordingly, the Board affirmed the examiners rejections. Owens timely appealed, and we have jurisdiction under 28 U.S.C. 1295(a)(4)(A) and 35 U.S.C. 141. II The statutory provision governing the effective filing date 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 provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.). Entitlement to priority under 120 is a matter 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 parents effective filing date, a continuation must comply with the written description requirement of 35 U.S.C. 112, 1. 35 U.S.C. 120; Daniels, 144 F.3d at 1456. Whether a claimed invention is supported by an adequate written description under 112, 1, is a question of fact that we review for substantial 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 either a design or a utility patent, has been expressed as whether the disclosure of the application relied upon reasonably conveys to those

INRE: TIMOTHY OWENS

skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Id. In the context of design patents, the drawings provide the written description 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 than the drawings.). Thus, when an issue of priority arises under 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure 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 Owens introduced in his continuation application. The parties agree that the parent application discloses no boundary that corresponds (either explicitly or implicitly) to this newly-added broken line. However, the parties also agree that a design patentee may, under certain circumstances, introduce via amendment a straight broken line without adding new matter, even [w]here no [corresponding] boundary line is shown in a design application as originally filed. MPEP 1503.02. The parties refer to these broken-line boundaries as unclaimed boundary lines because the lines are not intended to form part of the claimed design and do not exist in reality in the article embodying the design. Id. Rather, when an unclaimed boundary line is introduced via amendment or continuation, it is understood that the claimed design extends to the [unclaimed] boundary but does not include the [unclaimed] boundary. Id. In other words, when an unclaimed boundary line divides a previously claimed area, it indicates that the applicant has disclaimed the portion beyond the boundary

IN RE: TIMOTHY OWENS

while claiming the area within it. Where permissible, unclaimed boundary lines allow the patentee to adjust his patent coverage and encompass embodiments that differ slightly but insignificantly from the originally-filed design. However, like all amendments made during prosecution, these lines must 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 Owenss case. The Board rejected the 172 application because it believed that, as a prerequisite to patentability, Owens needed to demonstrate prior possession of a bottle with a trapezoidal 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. Instead, Owens attacks the very notion that his continuation 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 his newlyintroduced broken line is, as all parties agree, unclaimed. Accordingly, he believes the Board applied the wrong written description test to his case, one which erroneously treated his unclaimed boundary as though it was claimed.

In initial design applications, it is appropriate to disclaim certain design elements using broken lines, provided the application makes clear what has been claimed. See In re Zahn, 617 F.2d 261, 266-67 (CCPA 1980); In re Blum, 374 F.2d 904, 907 (CCPA 1967). These so-called environmental lines are not at issue in this case, because they do not implicate 120.
1

INRE: TIMOTHY OWENS

Owens suggests a more relaxed written description test for these circumstances based upon his interpretation of In re Daniels. In that case, we held that 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. Daniels, 144 F.3d at 1454-55. We 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. Id. at 1456-57. Owens believes his amendment satisfies the Daniels test because all portions of his pentagonal front panel were clearly visible in the 709 application. His argument 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 believes he should now be permitted to disclaim any portion of his original design in a continuation and still survive the written description test. Owens misconstrues our holding in Daniels. The patentee in Daniels did not introduce any new unclaimed lines, he removed an entire design element. It 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. Moreover, the written description question does not turn upon what has been disclaimed, but instead upon whether 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) (internal quotation marks omitted); Daniels, 144 F.3d at 1456 (The [written description] inquiry is simply to determine

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IN RE: TIMOTHY OWENS

whether the inventor had possession at the earlier date of what was claimed at the later date.). In this case, Owenss parent application discloses a design for a bottle with an undivided pentagonal center-front panel, whereas the continuation claims only the trapezoidal top portion of that center-front panel. Therefore, the question for written description purposes is whether a skilled artisan would recognize upon reading the parents disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area. Ariad, 598 F.3d at 1351. The Board answered this factual question in the negative, finding that nothing in the parent applications disclosure suggested anything uniquely patentable about the top portion of the bottles front panel. This finding is supported by substantial evidence 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. Indeed, Owens did not argue to the contrary before the Board, nor does he do so on appeal. Accordingly, we must affirm the Boards decision. V Lastly, we turn to a question raised implicitly in Owenss appeal and explicitly in amicus briefingwhether, and under what circumstances, Owens could introduce an unclaimed boundary 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 unclaimed boundary lines may be acceptable when connecting the ends of existing full lines. MPEP 1503.02. Were this the rule, it might be acceptable for Owens to bisect his front panel with a broken line along the pentagons widest point. However, it seems that such a boundary would simply outline a larger trapezoidal area, and so

INRE: TIMOTHY OWENS

11

the resulting claim would suffer from the same written description problems as the 172 application. Prior PTO practice offers similarly ambiguous guidance. For instance, the amicus brief noted certain past allowances that seemingly contradict both the MPEP and the PTOs rejection of the Owens continuation. Compare the 702 application, and the 172 application, with U.S. Patent No. D545,954 (issued July 3, 2007) (parent design patent claiming humidifier), and U.S. Patent No. D569,958 (issued May 27, 2008) (continuation allowed despite having areas of humidifier bisected with unclaimed boundary lines). 2 In our view, the best advice for future applicants was presented in the PTOs brief, which argued 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. 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 applications will be evaluated according to it. This rule comports with our understanding of how unclaimed boundary lines generally should affect entitlement to an earlier filing date under 112, 1, and 120. Its implications for Owenss case should be obvious. CONCLUSION For the reasons set forth above, we affirm the Boards rejection of the 172 application. AFFIRMED

These humidifier patents are presented for comparisons sake only. We have not considered, and express no opinion upon, whether they properly issued.
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United States Court of Appeals for the Federal Circuit

IN RE TIMOTHY S. OWENS, No. 12-1260 CERTIFICATE OF SERVICE I, Elissa Matias, being duly sworn according to law and being over the age of 18, upon my oath depose and say that: Counsel Press was retained by SAIDMAN DESIGNLAW GROUP, LLC, Attorneys for Appellants to print this document. I am an employee of Counsel Press. On June 10, 2013 Counsel for Appellant has authorized me to electronically file the foregoing Appellants Combined Petition for Panel Rehearing and Rehearing En Banc with the Clerk of Court using the CM/ECF System, which will serve via e-mail notice of such filing to any of the following counsel registered as CM/ECF users: Raymond T. Chen tasha.gibbs@uspto.gov William LaMarca william.lamarca@uspto.gov Lynne Pettigrew lynne.pettigrew@uspto.gov Patent and Trademark Office P.O. Box 1450 Mail Stop 8 Alexandria, VA 22313-1450 (571) 272-9035 Counsel for Appellees Tracy-Gene G. Durkin tdurkin@skgf.com David K.S. Cornwell davidc@skgf.com Jonathan M. Strang jstrang@skgf.com Jon Wright jwright@skgf.com Sterne Kessler Goldstein & Fox PLLC 1100 New York Avenue, NW Washington, DC 20005-3934 (202) 371-2600 Counsel for Amicus Curiae Method Products, Inc.

Paper copies will also be mailed to the above counsel for Appellees on this date Additionally, 16 paper copies will be sent to the Court, via Federal Express, on this date. June 10, 2013 /s/ Elissa Matias Counsel Press