[author: Jon Gibbons]
On April 22, 2025, the Federal Circuit issued a decision In re: Bonnie Iris McDonald Floyd that underscores a critical and often overlooked risk in design patent prosecution: relying on a utility patent application for priority. The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decision denying a design patent priority claim and finding the design anticipated by the very utility application to which priority was asserted.
Background of the Case
In March 2019, Applicant Bonnie Iris McDonald Floyd filed a design patent application (No. 29/685,345) for an ornamental design for a “Cooling Blanket for Humans and Animals.” She claimed priority to her earlier filed utility application (No. 15/004,938), filed in January 2016, which disclosed a cooling blanket with various configurations of sealed compartments.
During prosecution of the design application, the examiner rejected the claim, finding that the claimed six-by-five compartment configuration was not shown in the utility application and therefore constituted new matter not entitled to the benefit of priority to the utility application. Because the utility application predated the design application and no exception under § 102(b) was applicable, it was cited as prior art under § 102(a) and deemed to anticipate the design. The PTAB affirmed the examiner’s rejection.
Figures 1 & 1A of the utility application six-by-six and four-by-six
Figure 1 of the ’345 design application six -by-five
Federal Circuit Review
On appeal, the Federal Circuit agreed with the PTAB that the utility application failed to provide written description support for the claimed design. The court noted that although the utility application used broad language—such as stating that “the embodiment can be made in any size”—this generality did not suffice to show that the inventor possessed the specific six-by-five design depicted and claimed in the later-filed design application.
The court also found that while the utility application included figures showing six-by-six and six-by-four arrays, those figures alone did not support an inference that the six-by-five array was contemplated. The court concluded that these drawings illustrated distinct embodiments, not endpoints of a range from which intermediate configurations could be inferred.
Rejection of Floyd’s Arguments
Floyd raised several arguments on appeal:
- That the design was inherently disclosed by the utility application;
- That the number of compartments was a functional feature and thus not limiting; and
- That the differences in design were trivial or obvious to skilled artisans.
The Federal Circuit rejected each argument. It explained that even in predictable fields, a design patent must demonstrate possession of the claimed visual impression within the four corners of the application. The court further emphasized that differences in compartment number, layout, and visual appearance were sufficient to support the PTAB’s finding that the six-by-five configuration was not disclosed.
The Federal Circuit also ruled that Floyd had forfeited arguments about functionality by failing to raise them before the PTAB and that, in any case, the number of compartments was not shown to be dictated by functional considerations alone.
Implications for Design Patent Filers
This case reinforces that written description support for a design patent must clearly disclose the specific visual appearance claimed—not merely suggest a range of possible configurations. Applicants seeking priority from earlier utility filings must ensure that the visual features of the design are either depicted or described with sufficient clarity to show possession of the claimed design.
More broadly, this decision is a reminder that the standards for written description under § 112 are distinct from those for anticipation under § 102, and courts, as well as the USPTO, will not infer possession of intermediate designs without clear disclosure.
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