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March 31, 2013

Patent Law By Design

Tim Owens added a internal (unclaimed) trapazoidal region to his bottle design application. The examiner considered it a substantial change (new subject matter), as did the PTO appeal Board and CAFC. That may seem unremarkable, except it represents a substantial change in the law by PTO fiat, backed by the appeals court.

In re Timothy S. Owens et al (CAFC 2012-1261) precedential; Judges Prost (author), Moore, Wallach

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 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).
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 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.

If that seems somewhat muddled, it gets worse.

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 pentagon's widest point.
Prior PTO practice offers similarly ambiguous guidance. For instance, the amicus brief noted certain past allowances that seemingly contradict both the MPEP and the PTO's rejection of the Owens continuation.
In our view, the best advice for future applicants was presented in the PTO's 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.


The rule of law exists to provide adjudicative consistency, however foolish. Ralph Waldo Emerson opined: "a foolish consistency is the hobgoblin of small minds." As the USPTO and CAFC lack small minds, consistency can be considered foolish, however it changes the law.

When filing a patent application, first dot the i's and cross the t's, as well as putting in all the dotted lines you think you'll need.

Posted by Patent Hawk at March 31, 2013 2:32 PM | Design Patents