[W]hen 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, [but], like all amendments made during prosecution, these lines must comply with the written description requirement to receive the benefit of priority under § 120.
On March 26, 2013, in In re Owens, the U.S. Court of Appeals for the Federal Circuit (Prost,* Moore, Wallach) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection of U.S. Design Patent Application No. 29/253,172, which related to a bottle design. The Federal Circuit stated:
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. . . . To be entitled to a parent's effective filing date, a continuation must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1. . . . 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." In the context of design patents, the drawings provide the written description of the invention. 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.
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." 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." 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."
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.
[T]he 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." In this case, Owens's 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 parent's disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area.
The Board answered this factual question in the negative, finding that nothing in the parent application's disclosure suggested anything uniquely patentable about the top portion of the bottle's 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 Board's decision.