In re Owens (2012-1261) is currently pending before the Federal Circuit Court of Appeals. The case presents a matter of first impression regarding continuation practice for design patents, and specifically the ability of applicants to use unclaimed boundary lines. Oral argument was held on January 9, 2013. Here is a link to an MP3 of the oral argument. Oral Argument for 2012-1261
The facts of the case can be boiled down to the following illustration:
The image on the left is from the parent application, while the image on the right is from the child. The child sought to claim priority back to the parent. The BPAI held that the child was not entitled to priority 35 U.S.C. § 120 because the child was not fully described in the parent and thus did not satisfy the written description requirement of 35 U.S.C. § 112(a). More specifically, the BPAI held that the applicant was not “in possession” of the design claimed in the child at the time of filing the parent. With the priority claim being denied and the parent having been published (as patent D531515) more than one year prior to the filing date of the child, the parent served as a block to patentability of the child. Thus, the issue of whether priority was appropriate was case determinative.
The key to the case resides in the dot-dash unclaimed boundary line. As explained below, if the boundary line is properly interpreted, Owens should prevail. If, however, the boundary line is somehow considered as being part of the claimed design (e.g. a claimed horizontal line), Owens will lose because the horizontal line was not described in the parent.
It is well-settled that during prosecution (including continuation practice) solid lines can be converted to dashed lines and vice-versa. (As show in the above illustration, several of the solid lines in the parent were converted to dotted lines in the child.) In utility patent speak, it is helpful to think of the universe of dashed lines and solid lines in design application as the “specification.” The design applicant can choose to claim (in solid lines) anything that is described and disclosed in that universe of subject matter in the “specification.” But this case is not about dashed lines or solid lines, rather it is about boundary lines. Typically, boundary lines are denoted with “dot-dash” lines. Below is a visual illustation of dashed lines vs. dot-dash lines.
In the child in Owens, there was a horizontal dot-dash line that was added to denote the lower limit of the claimed design on the front face of the bottle. Significantly, the boundary line is not claimed. Indeed, if the applicant attempted to claim the lower edge, it would surely constitute the introduction of new matter; no such line existed in the parent. Instead, Applicant merely has added an unclaimed boundary, denoting that the claim is everything north of the boundary line, but not including the boundary line. Significantly, every claimed curve, angle and surface of the child was described and disclosed in the parent.
A few examples, further highlight the issue in the case. The claimed portions are highlighted in blue.
EXAMPLE 1: In the first example, we see standard design patent continuation practice – conversion of solid lines (in the parent) to dashed lines (in the child). (This example does not implicate dot-dash boundary lines.) The Federal Circuit has made clear that this type of conversion does not offend 35 U.S.C. § 112(a). See Vas‐Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
EXAMPLE 2:The next example also shows accepted USPTO practice. See MPEP 1503.02 Here, a boundary line (the dot-dashline) has connected the points on the sides of the diamond shape). The net result is a claim scope covering designs that incorporate the top half of the diamond, irrespective of a design’s lower resolution. The lower resolution is not claimed. In utility patent speak this is analagous to claim language requiring “at least the top half of the diamond.” It makes sense that this is permitted because every angle and surface that is claimed in the child is described and disclosed in the parent. Of course, the remaining claimed portion must satisfy the other staturory requirements for patentability. (i.e. novely, non-obviousness, ornamentality, etc.)
EXAMPLE 3: The last example fairly represents the facts of In re Owens. Here, a dot dashed unclaimed boundary line has been added, not at a point spanning the side points of the diamond (a location permitted by the USPTO), but rather at a position above the midpoint. In the eyes of the USPTO, this slight push to the north violates 35 U.S.C. § 112(a). 
It seems inconsistent to hold that the child in Examples 1 and 2 are supported by their respective parents, but that the child in Example 3 is not. Again, every surface and every angle in the claimed child of Example 3 was disclosed and described in the parent of Example 3. The applicant is not claiming the lower border; the claim is not directed at a triangle shape. Rather, the lower resolution of the claimed design is not specified. As noted above, the lower resolution need not be a straight line; it could be wavy; it could be a semi-circle. Again, in utility patent speak this is analagous to claim language requiring “at least the top tip of the diamond.”
Back to In re Owens
At oral argument, the Panel seemed hung up on the idea that the Applicant was somehow claiming a “trapezoid shape” in the child, and that because this trapezoid shape was not present in the parent, the written desciption requirement is not satisfied. The problem with this reasoning is that the applicant is NOT claiming a trapezoid shape. (Query: The PTO does not include the shape created by boundary lines in its searches. Rather, they are properly focused on the claimed portion. Think GUI or icon - searching is not conducted on the shape of the screen’s unclaimed boundary line.) Thus, there was not “new matter” added to the claim. Proper interpretation of the claim, and the boundary line, leaves no portion in the child that wasn’t disclosed and described in the parent. Simply put, the lower resolution of the front panel of the bottle was not claimed and thus there need not be support for such lower boundary in the parent. Again, the problem with the BPAI’s conclusion stems from its misinterpretation of the meaning of an unclaimed boundary line. Owens was not claiming a a trapezoid shape on the front face of the bottle.
In conclusion, every line, surface and curve claimed in the child in Owens is fully described and disclosed in its parent. Stated another way, the Applicant was in possession of every line, surface and curve claimed in the child when the parent was filed. Thus, having satisfied the requirements of 35 U.S.C. § 112(a), the child should be entitled to priority 35 U.S.C. § 120. We shall see if the Panel agrees. Stay tuned.
Excellent briefs in the case were submitted by leading design patent practitioners Perry Saidman and Tracy-Gene Durkin. Perry Saidman filed briefs on behalf Appellant Owens. Appellant’s Opening Brief, Appellant’s Reply Brief. Tracy-Gene Durkin, and her firm, filed an amicus brief on behalf of Method Products Inc. Method’s Amicus Brief (Corrected).
