Addressing the issue of when and under what circumstances a design patent application can receive the benefit of the written description of its parent, the U.S. Court of Appeals for the Federal Circuit denied a bid by a bottle designer to claim priority to a parent application where a continuation attempted to claim only certain portions of the bottle he designed, finding that the introduction of dotted, unclaimed boundaries introduced new matter. In re Owens, Case No. 12-1261 (Fed. Cir., Mar. 26, 2013) (Prost, J.). 

Timothy Owens appealed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board), affirming a rejection of his continuation design patent application.  The continuation application sought to claim the benefit of priority to a parent design application, which ultimately issued as a U.S. design patent.  Owens conceded that without the benefit of priority to the earlier application, the continuation application was barred by prior sales.

The continuation application claimed certain design elements found on the top and side portions of the original mouthwash bottle disclosed and claimed in the parent patent, including an upper portion of the bottle’s front pentagonal center panel. To indicate what portion of the center area was claimed in the continuation application, Owens bisected the top of the front pentagonal panel with a broken line.  The examiner rejected the application, reasoning that the addition of the broken line defined an entirely new trapezoidal-shaped surface that constituted new matter.  The examiner found no evidence that, in the parent application, Owens indicated processing such a trapezoidal region and rejected the continuation application for lack of written description under § 112, ¶ 1. 

After the Board affirmed the examiner, Owens appealed. 

On appeal, Owens argued against the notion that his continuation application claimed a trapezoidal-shaped area at all but explained that in order to claim his new design element, he was simply claiming a new boundary. However, as all parties agreed, the newly introduced broken line was “unclaimed.” Accordingly, Owens argued that the Board applied the wrong written description test to his case, one which erroneously treated his unclaimed boundary as though it were claimed.

The Federal Circuit, in affirming the Board, found that by introducing figures with a bottle that was bisected at the top of its pentagonal panel, Owens introduced new subject matter in his design patent application , i.e., the trapezoidal region.  The Federal Circuit agreed with the Board that nothing in the parent application’s disclosure suggested anything uniquely patentable about the top portion of the bottle’s front panel, nor was there anything in the parent application indicating that Owens had in his possession a bottle design that was bisected at the top of its pentagonal panel. 

In addressing whether, and under what circumstances, a patentee can introduce an unclaimed boundary line in a continuing application and still receive the benefit of the written description of its parent, the Federal Circuit suggested that there are circumstances in which an unclaimed boundary line may not constitute new matter, such as if it only makes explicit a boundary that already existed but that was previously unclaimed in the original disclosure.