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1 Case: Document: 27 Page: 1 Filed: 05/23/2012 Corrected (Serial No. 29/253,172) United States Court of Appeals for the Federal Circuit IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E. HAGUE Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. BRIEF FOR APPELLANTS Perry J. Saidman SAIDMAN DesignLaw Group, LLC 8601 Georgia Ave., Suite 603 Silver Spring, MD (301) (301) (fax) and David M. Weirich The Procter & Gamble Company 299 East Sixth Street Cincinnati, OH (513) (513) (fax) May 14, 2012 Attorneys for Appellants COUNSEL PRESS, LLC (202) * (888)

2 Case: Document: 27 Page: 2 Filed: 05/23/2012 CERTIFICATE OF INTEREST The undersigned counsel for Appellants certifies the following: 1. The full names of every party represented by me are: Timothy D. Owens, Sheila Marie Kelly, Robert Maurice Lynch IV, Jason Craig Campbell, and Philip Edwin Hague. 2. The name of the real party in interest represented by me is: The Procter & Gamble Company. 3. All parent corporation and any publicly held companies that own 10 percent or more of the stock of the real party in interest represented by me are: None. 4. The names of all law firms and the partners or associates that appeared for the parties now represented by me in the agency or are expected to appear in this court are: Perry J. Saidman, SAIDMAN DesignLaw Group, LLC; and David M. Weirich, The Procter & Gamble Company. i

3 Case: Document: 27 Page: 3 Filed: 05/23/2012 TABLE OF CONTENTS Page CERTIFICATE OF INTEREST... i TABLE OF CONTENTS... ii TABLE OF AUTHORITIES...iv I. STATEMENT OF RELATED CASES...1 II. III. IV. JURISDICTIONAL STATEMENT...1 STATEMENT OF ISSUES PRESENTED FOR REVIEW...2 STATEMENT OF THE CASE...3 V. STATEMENT OF THE FACTS...4 A. The Claim on Appeal...4 B. The Rejections...10 VI. VII. SUMMARY OF THE ARGUMENT...13 ARGUMENT...15 A. Standard of Review...15 B. The Later Application Claims Not Only a Reasonably Identifiable Portion of the Article of Manufacture Disclosed in the Earlier Application, but the Exact Portion...16 C. In re Daniels Mandates Reversal...18 D. The Claimed Design is Clearly Visible in the Earlier Application...21 ii

4 Case: Document: 27 Page: 4 Filed: 05/23/2012 E. It is Not New Matter to Add a Broken Line Boundary to a Design Patent Drawing...25 F. The PTO Permits Disclaiming Portions of a Design in Continuation Applications...28 G. The Board s Reliance on In re Lukach is Misplaced...32 H. The Rejection of the Claimed Design Under 35 U.S.C. 103(a) over a Reference is Inconsistent with Finding that the Claimed Design is Insufficiently Disclosed by the Same Reference...40 VIII. CONCLUSION AND STATEMENT OF RELIEF SOUGHT...48 iii

5 Case: Document: 27 Page: 5 Filed: 05/23/2012 TABLE OF AUTHORITIES Page(s) Cases Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) In re Brower, 433 F.2d 813 (CCPA 1970) , 31 In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998) , 14-20, 48 In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989)... 15, 17, 20, 23 In re Hafner, 410 F.2d 1403 (CCPA 1969) In re Lukach, 442 F.2d 967 (CCPA 1971)... 12, 14, 32-33, 35-36, 39-40, 44-45, 49 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) In re Wertheim, 541 F.2d 257 (CCPA 1976)... 17, 23, 31 In re Zahn, 617 F.2d 261 (CCPA 1980)... 8 Racing Strollers, Inc. v. TRI Indus., 878 F.2d 1418 (Fed. Cir. 1989) Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) iv

6 Case: Document: 27 Page: 6 Filed: 05/23/2012 Statutes and Rules 28 U.S.C. 1295(a) U.S.C. 2107(b) U.S.C U.S.C , 40, U.S.C , 11, 32, 40-42, 44-45, U.S.C , 10-13, 15-18, 20, 24, 26, 30, 31, U.S.C , 10, 13, 15-17, 30, 32, 40, 43-44, U.S.C , U.S.C U.S.C U.S.C , C.F.R (f) C.F.R Fed. Cir. Rule 15(a)(1)... 1 Other Manual of Patent Examining Procedure Manual of Patent Examining Procedure , Manual of Patent Examining Procedure , 26 Robert S. Katz, Design Patents, in Drafting Patents for Litigation and Licensing 561, (Bradley C. Wright ed. 2008) v

7 Case: Document: 27 Page: 7 Filed: 05/23/2012 I. STATEMENT OF RELATED CASES Counsel for Appellant is not aware of any other appeal or case that has appeared, or is currently, before this Court or any other court, and that will directly affect, or be directly affected by, this Court s decision in the pending appeal. II. JURISDICTIONAL STATEMENT This Court has exclusive jurisdiction over the present appeal under 28 U.S.C. 1295(a)(4)(A) and 35 U.S.C The present appeal is from a Decision on Appeal by the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office affirming the final rejection of the claim submitted by Appellant in the United States Patent Application Serial No. 29/253,172. The date of the Decision on Appeal by the Board, which is an appealable final order, is December 1, A Notice of Appeal to this Court was timely filed and served on the Solicitor for the United States Patent and Trademark Office on February 1, 2012, pursuant to 35 U.S.C. 142, 37 C.F.R , 28 U.S.C. 2107(b), and Fed. Cir. Rule 15(a)(1). 1

8 Case: Document: 27 Page: 8 Filed: 05/23/2012 III. STATEMENT OF THE ISSUES PRESENTED FOR REVIEW Whether the Board erred in finding that the claimed design was not described in an earlier application in accordance with 35 U.S.C. 112, 1, and therefore is not entitled to the filing date of the earlier application under 35 U.S.C Whether the Board erred in finding that the claimed design was not described in the application as filed in the manner required under 35 U.S.C. 112, 1. Whether a partial bottle design claimed in a later application, circumscribed in part by an unclaimed broken boundary line that is not itself explicitly shown in an earlier application, is disclosed in the earlier application in a manner that satisfies the written description requirement of 35 U.S.C. 112 when the earlier application shows a full bottle design of which the partial bottle design is a part. Appellants admit that in the event the claimed design is not found to be entitled to the filing date of the earlier application, then the claimed design is unpatentable in view of the earlier sale of an admitted prior art bottle, i.e., the one illustrated in U.S. Patent No. D531,515. (A ). 2

9 Case: Document: 27 Page: 9 Filed: 05/23/2012 IV. STATEMENT OF THE CASE This is an appeal under 35 U.S.C. 134 from the December 1, 2011 decision of the Board of Patent Appeals and Interferences (A1-14) which affirmed the Examiner s January 9, 2009 rejection (A175-83) of the sole design patent claim under 35 U.S.C. 112, 1 for failure to comply with the written description requirement, i.e., the claimed design was not disclosed in the application as filed on February 2, 2006 (A22-27). The Board also affirmed the Examiner s denial of Appellants claim to priority to an earlier application under 35 U.S.C. 120, saying that the design claimed in the later application was not disclosed in the earlier application (filed December 21, 2004) (A230-32) in accordance with the written description requirement of 35 U.S.C. 112, 1. The Board thereby also affirmed the Examiner s rejection of the claim under 35 U.S.C. 103(a) in view of the admitted sale of a bottle embodying the claimed design (as shown in U.S. Pat. No. D531,515) (A313-15), over one year prior to the filing date of the later application. If the claim on appeal is entitled under 120 to the benefit of the filing date of the earlier application, then the rejection under 103 falls. Appellants filed their Notice of Appeal from the Board decision to the Federal Circuit on February 1,

10 Case: Document: 27 Page: 10 Filed: 05/23/2012 V. STATEMENT OF THE FACTS A. The Claim on Appeal The present application was filed on February 2, 2006 ( the later application ) ( A22-27) as a continuation of application ser. no. 29/219,709 filed December 21, 2004 ( the earlier application ) ( A230-32), now U.S. Pat. No. D531,515, issued on November 7, 2006 (A313-15). Priority under 35 U.S.C. 120 is claimed in the later application to the earlier application. 1 1 The Board in its opinion referred to the earlier application as the 709 application, and the later application as the underlying application. (A2). The Board mistakenly identified the issue date of the 709 application as its filing date. (A2). 4

11 Case: Document: 27 Page: 11 Filed: 05/23/2012 The earlier application discloses an entire bottle (shown in Figs. 1-3 below) (A231-32). The bottle top is disclosed in broken lines, indicating it is not part of the design claimed in the earlier application. FIG. 1 FIG. 2 FIG. 3 5

12 Case: Document: 27 Page: 12 Filed: 05/23/2012 The later application as filed claimed a small upper portion ( sloped crescent shaped surface ) of the bottle disclosed in the earlier application, as shown below in original Figs. 1-3 as filed on February 2, 2006 (A25-27). FIG. 1 FIG. 2 FIG. 3 6

13 Case: Document: 27 Page: 13 Filed: 05/23/2012 On October 29, 2008, Appellants amended the claim of the present application to that shown in Figs. 1-3 below (A172-74), which is the claim on appeal. 2 FIG. 1 FIG. 2 FIG. 3 2 FIGS. 2 and 3 were amended in response to an Office action (A161-62) to include a missing broken line shown in FIG. 1. 7

14 Case: Document: 27 Page: 14 Filed: 05/23/2012 The claim on appeal comprises an upper and side portion of a bottle. 3 The drawings include solid lines, dotted broken lines, and a dash-dot broken line. Appellants defined two different types of broken lines dotted and dash-dot that connote very different things. 4 The dotted broken lines are environmental and form no part of the claimed design. 5 The dash-dot broken line represents boundaries of the claimed design and forms no part of the claimed design. 6 3 In the prior proceedings, the various regions or areas of the claimed side and upper portion have been referred to as narrow triangular portions, a trapezoidal area, and a sloped crescent shaped surface. To minimize deconstruction of the overall claimed design, Appellants here describe it collectively as a side and upper portion. 4 M.P.E.P : The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim. 5 Id. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). 6 Id. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. 8

15 Case: Document: 27 Page: 15 Filed: 05/23/2012 Environment Boundary Environment It is well understood that both types of broken lines are not part of the design patent claim. Environmental broken lines represent actual structural features of the underlying article of manufacture, while broken line boundaries generally do not represent actual structural features; rather, broken line boundaries are a drafting tool (like surface shading) that helps a design patent applicant define the claimed region of the underlying article of manufacture that he/she regards as his/her design. The difference in the two types of broken lines is significant: environmental broken lines that are part of the original disclosure may be converted to solid lines during 9

16 Case: Document: 27 Page: 16 Filed: 05/23/2012 prosecution, and vice versa, without calling new matter into question. 7 However, broken line boundaries, since they do not represent actual structural features, may generally not be converted to solid lines. While this discussion is directed to that portion of the claimed design positioned on one side of the bottle, it is understood that the other or rear side of the bottle duplicates the appearance of the front side. B. The Rejections The Examiner rejected the claim on appeal under 35 U.S.C. 112, 1, as failing to comply with the description requirement thereof since the drawings introduce new matter not supported by the original disclosure. (A ) This rejection was based on the presence in the [later application] of an unclaimed horizontal dot-dash line that forms the lower boundary to the trapezoidal-shaped area. (A ) Appellants claim to priority under 35 U.S.C. 120 as a continuation of the earlier application was denied on the same grounds, i.e., that the claimed design was not disclosed in the earlier application in a manner that satisfied the first paragraph of 35 U.S.C (A ) 7 See discussion infra at page

17 Case: Document: 27 Page: 17 Filed: 05/23/2012 As a result of the denial of the claim to priority, the claimed design was further rejected by the Examiner under 35 U.S.C. 103(a) as unpatentable over the admitted prior art, which is illustrated in U.S. Design Patent No. D531, (A181-82; A ) This rejection will be obviated in the event the above-noted claim to priority under 35 U.S.C. 120 is valid. Affirming the Examiner s rejections, the Board made no mention of new matter. Instead, the Board framed two questions to be answered on appeal: First, does the '709 application provide a written description adequate to convey to an ordinary designer that the Appellants possessed the subject matter of the claim on appeal as of the filing date of the '709 application? Second, does the underlying application as originally filed provide a written description adequate to convey to an ordinary designer that the Appellants possessed the subject matter of the claim on appeal as of the filing date of the underlying application? 9 (A4.) 8 Appellants admitted that a bottle embodying the claimed design (as shown in the 515 patent) was on sale over one year prior to the filing date of the later application. (A65.) On this basis, the claim was initially rejected by the Examiner under 35 U.S.C. 102(b) as being statutorily barred by the admitted sale. (A88-89.) It is not clear why the Examiner withdrew this ground of rejection in favor of a rejection under 35 U.S.C. 103(a) on the same grounds, i.e., the admitted sale of a bottle embodying the claimed design (as shown in the 515 patent) over a year prior to the filing date of the later application. (A138 (withdrawing the 102(b) rejection); A (making the 103(a) rejection)). For the purposes of this brief, Appellants shall argue the impropriety of a rejection based on the admitted prior art under both 102(b) and 103(a). 9 See note 1 for an explanation of underlying application. 11

18 Case: Document: 27 Page: 18 Filed: 05/23/2012 Answering both questions in the negative, the Board characterized the claimed design on appeal as not limited to the design shown in solid lines in the originally-filed drawing of the 709 application, finding that the drawing figures of the 709 application merely disclose an example of a design (or a small range of examples of designs) encompassed by the range of designs claimed in the claim on appeal. (A9.) The Board relied on In re Lukach 10 as controlling, characterizing its holding as: an example disclosed in a parent case does not necessarily describe a subsequently claimed range which contains the example. (A10.) With Lukach as the lynchpin, the Board concluded that the example of a design disclosed in the 709 application does not describe the range of designs claimed in the claim on appeal in a manner that satisfies 112, 1. (A11.) The Board distinguished In re Daniels 11 by saying that it was not on [sic] analogous to the facts of this appeal. (A11-12.) Finally, the Board dismissed without substantive discussion Appellants argument that there is a prima facie inconsistency in the Examiner rejecting the partial bottle design as anticipated/rendered obvious by a full bottle, and then F.2d 967 (CCPA 1971) F.3d 1452, 1455 (Fed. Cir. 1998). 12

19 Case: Document: 27 Page: 19 Filed: 05/23/2012 saying that the same full bottle disclosure does not describe the claimed partial bottle design sufficiently to satisfy 112. VI. SUMMARY OF THE ARGUMENT Appellants are entitled to claim priority in their present application under 35 U.S.C. 120 from their earlier application because everything shown in the claim on appeal is visibly disclosed in the earlier application in accordance with 35 USC 112, 1. There is a one-to-one correspondence of every portion of the design now being claimed to the article of manufacture originally disclosed. Under the settled case law of In re Daniels, what is being claimed in a later design application does not raise an issue of new matter as long as it is a reasonably identifiable portion of the original drawing disclosure in the earlier application. Daniels concerned a portion of a design, a surface decoration, that was removed or disclaimed from a product shape shown in an earlier application. In the present case, a portion of a product shape shown in an earlier application is removed, i.e., disclaimed, in a later application. The principle is the same in both cases. It is beyond question that a designer of ordinary skill, viewing the full bottle disclosed in the earlier application, would immediately and visually perceive that 13

20 Case: Document: 27 Page: 20 Filed: 05/23/2012 Appellants designed not only the entire bottle, but also each surface and portion thereof, including the side and upper portion now claimed in the later application. It is not new matter to add a broken line boundary to a design patent drawing because such a boundary is not part of the disclosure, since it does not exist in reality. Additionally, there are numerous inconsistencies in the M.P.E.P., and that occurred during prosecution of this application, that were not addressed by the Board. The Board s heavy reliance on In re Lukach is misplaced in that utility patent case law does not translate well to design patents. For example, design patent claims cannot be characterized as broad and narrow in the same sense as utility patent claims. Further, the ornamental design on appeal cannot be characterized as claiming a range of designs, which is central to the Board s argument, in the same way that the applicant in Lukach claimed a range of copolymers. The ornamental design on appeal is the appearance of a single design consisting of the surface areas within the solid and broken line boundaries (including the solid lines themselves) as shown in the drawings. The Board also mischaracterized the earlier application as disclosing only an example. To the contrary, the earlier application discloses a very large number of different designs that will support later design patent claims to a portion or combination of portions thus disclosed. 14

21 Case: Document: 27 Page: 21 Filed: 05/23/2012 The Examiner and Board s position that the portion of the bottle claimed in the later application finds a counterpart in the earlier application (as issued in the 515 patent), and is therefore obvious thereover, directly contradicts their argument that the claimed design is not disclosed in the earlier application in a manner to satisfy 112. In other words, if a full bottle (e.g., as shown in the 515 patent) includes that portion of the bottle now being claimed such that it constitutes an anticipatory reference, or a reference that renders the claimed design obvious, then that same full bottle illustrated in the earlier application provides a written description of that portion of the bottle now being claimed sufficient to satisfy 112. Seemingly contrary case law is limited to utility patents and simply does not apply to design patents. VII. ARGUMENT A. Standard of review Although compliance with the written description requirement is a question of fact, entitlement to priority under 120 is a matter of law, and receives plenary review on appeal. 12 Any disputed factual questions are reviewed on the clearly erroneous standard Vas-Cath, Inc. v. Mahurkar 935 F.2d 1555, 1563 (Fed. Cir. 1991); In re Daniels, supra note Daniels, supra note 11 at 1455; In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). 15

22 Case: Document: 27 Page: 22 Filed: 05/23/2012 requirement: B. The Later Application Claims Not Only a Reasonably Identifiable Portion of the Article of Manufacture Disclosed in the Earlier Application, but the Exact Portion The first paragraph of section 112 sets forth the written description The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 14 treated: Section 120 governs the manner in which continuing applications are to be An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application U.S.C. 112, U.S.C

23 Case: Document: 27 Page: 23 Filed: 05/23/2012 Thus, a later application is entitled to the benefit of the filing date of an earlier application if the later claimed subject matter is described in the earlier application in compliance with 112, 1. The written description requirement of section 112 can be satisfied by what is disclosed in the specification and drawings. 16 Thus, when an issue of priority arises under section 120, one can look to both the specification and the drawings of the earlier application for disclosure of the subject matter claimed in the later application. 17 The illustration of the claimed design in the later application does not have to be shown precisely in the earlier application to satisfy the written description requirement: Although [the applicant] does not have to describe exactly the subject matter claimed... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed For example, the disclosure includes verbiage in the specification, e.g., figure descriptions. M.P.E.P Daniels, supra note 11; Racing Strollers Inc. v. TRI Industries, 878 F.2d 1418, 1419 (Fed. Cir. 1989) (en banc). See note Gosteli, supra note 13 at 1012 (emphasis added); In re Wertheim, 541 F.2d 257, 263 (CCPA 1976), In re Brower 433 F.2d 813, 817 (CCPA 1970). 17

24 Case: Document: 27 Page: 24 Filed: 05/23/2012 In the present case, the claimed design is shown exactly in the earlier application every part, portion, area and boundary included as part of the claimed design is found in the disclosure of the earlier application. Appellants submit that when a later design application illustrates and claims a reasonably identifiable portion of the design illustrated in the earlier design application, the written description requirement of 35 U.S.C. 112, 1 is met. Without question, the later application here claims not only a reasonably identifiable portion of that article of manufacture disclosed in the earlier application, but in fact an exact portion. C. In re Daniels Mandates Reversal The Board s finding that Appellants later design patent application is not entitled to the filing date of their earlier application is in contravention of this Court s binding precedent in Daniels 19. There is no case law to the contrary. In Daniels, the earlier application claimed the container shown in the drawing on the left. The later application claimed the container shown on the right: 19 Daniels, supra note

25 Case: Document: 27 Page: 25 Filed: 05/23/2012 The difference in the two containers is manifest: the container in the earlier application included a fanciful surface decoration, while the container in the later application removed the surface decoration. As in the present case, Daniels turned on whether the later application was entitled to the benefit of the filing date of the earlier application. 20 This Court held in Daniels that the applicant s later application was entitled to the benefit of the filing date of his earlier application since the applicant in the earlier application was clearly in possession of everything claimed in the later application, i.e., this Court found that the container claimed in the later application was clearly visible in the earlier application In Daniels, if the claim to priority was denied, then the claim would have been unpatentable. 21 Daniels supra note 11 at

26 Case: Document: 27 Page: 26 Filed: 05/23/2012 This was the holding despite the fact that certain portions of the container claimed in the later application that were beneath the surface decoration in the earlier application were not specifically disclosed or identified in the earlier application. Thus, in Daniels the later claimed design was reasonably identifiable in the earlier application, adhering to the rule of In re Gosteli that the applicant did not have to describe in his earlier application exactly the subject matter claimed in his later application in order for 112, 1 to be satisfied. In the present case, not only is the design claimed in the later application reasonably identifiable in the earlier application, it is exactly identified. Daniels is analogous to the present case and neither the Examiner nor the Board has advanced any reason why it should not apply. Daniels concerned a surface decoration that was removed or disclaimed from a product shape shown in an earlier application. In the present case, a portion of a product shape shown in an earlier application is removed, i.e., disclaimed, in a later application. The principle is the same in both cases. D. The Claimed Design Is Clearly Visible in the Earlier Application The Appellants had possession of the presently claimed design at the time of filing their earlier application since the portion of the bottle now claimed is clearly visible in the earlier application that discloses the full bottle. The drawings in the 20

27 Case: Document: 27 Page: 27 Filed: 05/23/2012 earlier application provide a designer of ordinary skill with clear visual illustrations evidencing that Appellants designed the portion of the bottle now being claimed. Shown below on the left are FIGS 1-3 of the earlier application juxtaposed to FIGS. 1-3 of the claimed design in the later application on the right The Board interposes as its second issue the question of whether the claimed design was disclosed in the later application as filed. (A4.) Since the disclosure as filed in the later application incorporates by reference the disclosure of the earlier application (A22) the ultimate issue hinges on whether the claimed design was disclosed in the earlier application. Appellants will therefore devote their argument to the latter issue. 21

28 Case: Document: 27 Page: 28 Filed: 05/23/2012 Earlier Application Later Application FIG. 1 FIG. 1 FIG. 2 FIG. 2 FIG. 3 FIG. 3 22

29 Case: Document: 27 Page: 29 Filed: 05/23/2012 As seen in the side-by-side comparison above, some solid lines disclosed in the earlier application have been converted to broken lines in the later application, without objection by the Examiner or Board. 23 The later application claims a side and upper portion of the full bottle design clearly visible in the earlier application. And a lower boundary of the claimed design is indicated by a dash-dot broken line this broken line boundary is not part of the claimed design. The other broken lines in the claimed design are environmental and form no part of the claimed design. 24 The PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims. 25 The PTO takes the position that since the dashdot broken line boundary was not shown in the earlier application, a designer of ordinary skill would not recognize in the earlier application the trapezoidal area M.P.E.P See notes Wertheim, supra note 18; Gosteli, supra note 13. The Examiner and Board attempt to improperly shift this burden to the Appellants: Applicants have offered no explanation for how one of ordinary skill might recognize this shape on the front and rear center facet of the design of application 29/219, See note 3. 23

30 Case: Document: 27 Page: 30 Filed: 05/23/2012 circumscribed in part by the broken line boundary and the Board agreed (A214-15; A7.) It is beyond peradventure that a designer of ordinary skill, viewing the bottle design disclosed in the earlier application, would immediately and visually perceive that Appellants designed not only the entire bottle, but also each surface and portion thereof, including the side and upper portion claimed in the later application. Since the dash-dot broken boundary line is unclaimed, there is a one-to-one correspondence between all portions of the design claimed in the later application to those same portions visually disclosed in the earlier application. As illustrated below by dark shading, there is nothing in the presently claimed design that cannot be found in the earlier disclosed article of manufacture. It is all there, in plain view, recognizable by anyone. A designer of ordinary skill upon viewing all the drawings in both the earlier and later applications would immediately understand what the entire bottle looks like, as well as what the portion of that bottle now being claimed looks like. The visual appearances are not in doubt There is no rejection under the second paragraph of 35 U.S.C. 112, thus the partial bottle design is distinctly and clearly claimed. 24

31 Case: Document: 27 Page: 31 Filed: 05/23/2012 FIG. 2 FIG. 2 E. It is Not New Matter to Add a Broken Line Boundary to a Design Patent Drawing It is not impermissible new matter under 35 U.S.C. 132 to have added the dash-dot broken line boundary to the later application because a broken line boundary is a mere drafting tool it generally does not represent a boundary that exists in reality 28 as such, it can not be converted to a claimed solid line. 28 See note 6. 25

32 Case: Document: 27 Page: 32 Filed: 05/23/2012 Section 132 states in pertinent part: No amendment shall introduce new matter into the disclosure of the invention. 29 Since a broken line boundary cannot be claimed, it is not part of the disclosure, has not been added to the disclosure, and thus is not prohibited new matter under In considering the issue of whether the addition of broken lines to the drawings constitutes new matter, one must contrast broken line boundaries with broken line environmental structure. The PTO properly permits conversion of broken line environmental structure to solid lines, and vice versa, because environmental broken lines represent real structure in the underlying article of manufacture. [A]n amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration. The reason for this is because applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not a departure from the original disclosure Emphasis added. 30 Tellingly, although the Examiner based her entire 112 argument on the broken line boundary being new matter, the Board in its opinion makes no mention of new matter. 31 M.P.E.P

33 Case: Document: 27 Page: 33 Filed: 05/23/2012 However, as noted above, since broken line boundaries are a mere drafting tool, and generally do not represent real structure, they are not part of the disclosure, and they may be added to, or subtracted from, an application without themselves raising an issue of new matter. This is one way that design patent claims can be amended during prosecution, either to avoid prior art, or to claim a different aspect, feature or region of the disclosed article of manufacture. The rules of the PTO are contradictory and confusing regarding the addition of broken line boundaries. For example, the PTO specifically permits an applicant to add by amendment a straight broken line boundary: Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter. Any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f). 32 The foregoing is inconsistent with the PTO s position in the present case that the addition to the later application of the straight broken line boundary is new matter. The Examiner argued that adding a new straight broken line boundary is 32 M.P.E.P (emphasis added). 27

34 Case: Document: 27 Page: 34 Filed: 05/23/2012 acceptable only when it connects the ends of existing full lines. (A11.) The PTO offers no legal distinction, since there is none, as to why it is permissible to add a new straight broken line boundary in one situation and not in another. 33 The PTO s position seems arbitrary, at best. The Board adopted this reasoning of the Examiner in toto. (A12.) F. The PTO Permits Disclaiming Portions of a Design in Continuation Applications The Board sidestepped (by not even mentioning) another inconsistent position of the Examiner, who posited that while the central region of the claim (the so-called trapezoidal area ) is unsupported in the earlier application, the narrow side regions (the so-called narrow triangular areas ) are fully supported: It is true that there is no question that the two narrow triangular areas are clearly recognizable in the original disclosure of the present application. The trapezoidal area, however, was not originally illustrated. (A219.) The Board agreed regarding the trapezoidal area but made no mention of the triangular areas. 33 This legal inconsistency is amplified by the last sentence of M.P.E.P : Any broken line boundary other than a straight broken line may constitute new matter. If the PTO says it is not new matter to add a straight broken line boundary, on what grounds may it be new matter to add a curved broken line boundary? 28

35 Case: Document: 27 Page: 35 Filed: 05/23/2012 There is no legal distinction between the different areas or regions, insofar as disclosure in the earlier application is concerned. All claimed areas or regions are visually apparent in the earlier application. Moreover, the later application claims a partial bottle design that differs from that disclosed in the earlier application in other ways to which the Examiner and Board have made no objection. That is, there are other regions (indicated by A below) disclosed in the earlier application that are not part of the claim in the later application. A 29

36 Case: Document: 27 Page: 36 Filed: 05/23/2012 Neither the Examiner nor the Board have made any objection to the Appellants disclaiming in the later application certain regions A of the bottle disclosed in the earlier application, and it is common practice to do so. Modifying a design patent claim in a later application simply by disclaiming portions that were illustrated in an earlier application, and claiming other portions that were illustrated in the earlier application, should not affect the ability of an applicant to claim priority to the earlier application in the later application under 120. In the present case, Appellants have disclaimed in the later application a portion of the bottle that was illustrated in the earlier application. Neither the Examiner nor the Board has put forth any rationale for distinguishing between which areas disclosed in the earlier application may be disclaimed in the later application, and which may not. Appellants are entitled to claim any portion of the earlier disclosed design that they regard as their design and disclaim any portion of the earlier disclosed design. 34 It cannot be the law that otherwise proper continuation design patent applications may not be filed that disclaim elements, features or portions of a design previously disclosed in an earlier application. Such a law would effectively U.S.C. 112, 2: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 30

37 Case: Document: 27 Page: 37 Filed: 05/23/2012 prevent the common practice of using continuation applications to claim inventions that were disclosed but not claimed when the earlier application was filed. Wertheim: Such a practice is clearly recognized in the case law. As noted in In re Since the patent law provides for the amendment during prosecution of claims, as well as the specification supporting claims, 35 USC 132, it is clear that the reference to particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention in the second paragraph of 35 USC 112 does not prohibit the applicant from changing what he regards as his invention (i.e., the subject matter on which he seeks patent protection) during the pendency of his application. 35 In In re Brower, 36 claims in a continuation application that were directed to subject matter which appellants had not regarded as part of their invention when the parent application was filed was held not to prevent the continuation application from receiving the benefit of the parent s filing date. Thus, the rejection of the claim under 35 U.S.C. 112, 1, must fail because the design claimed in the later application not only is reasonably identifiable, but is fully and completely disclosed in the later application as filed, as well as in the earlier application as filed. The design claimed in the later application is therefore 35 Wertheim, supra note Brower, supra note

38 Case: Document: 27 Page: 38 Filed: 05/23/2012 entitled to the priority of the earlier application under 35 USC 120, and the rejection of the claim under 35 U.S.C. 103(a) must then also fail. G. The Board s Reliance on In re Lukach is Misplaced The Board has tried mightily, and in vain, to shoehorn the facts of the present case into In re Lukach. 37 In Lukach, the claimed invention was a copolymer of ethylene and propylene, characterized by certain physical characteristics, including:..a Mw/Mn ratio of at least 2.0 and less than about The Court in Lukach found that the earlier application disclosed only a single example where the copolymer had a Mw/Mn ratio of The Court then held: This single example does not alone provide support for the recited range from 2.0 to 3.0, and nothing has been brought to our attention to show that any other language in the [earlier] application, taken together with the knowledge of persons skilled in the art, points to the recited range Lukach, supra note 10 at Id. at Id. at Id. 32

39 Case: Document: 27 Page: 39 Filed: 05/23/2012 The Board in the present case argued: The conclusion to be drawn from the holding of Lukach is that an example disclosed in a parent case does not necessarily describe a subsequently claimed range which contains the example The Examiner correctly finds that particular range of designs claimed in the claim on appeal was not described in the 709 application. (A11.) The Board s strained logic fails. For one thing, despite the wording of 35 U.S.C. 171 that: The provisions of this title relating to patents for inventions shall apply to patents for designs, utility patent law does not always translate one-to-one to design patent law. This is due to the nature of the res being disclosed and claimed in the two types of patents. For example, in chemical cases, the nature of chemistry requires a fairly precise written description in words of a claimed invention, since changing any of the relationships or parts of an unpredictable chemical compound can make a significant difference in the result. If the words are not there, they re missing. It is easy to understand how disclosure of a single example in words does not support a claim to a range that encompasses the single example if there are no words that describe the range, or if the range would not have been apparent to a person of ordinary skill in the art. In a design patent, the difference between the disclosure and claim must be kept in mind. Although the disclosure and claim can coincide, they frequently do not (as in the present case), and they are distinctly different. The disclosure 33

40 Case: Document: 27 Page: 40 Filed: 05/23/2012 comprises everything shown in the originally filed application drawings, consisting of solid lines, broken line environmental structure, and the surfaces of the article of manufacture that lie within same. 41 These lines and surfaces constitute disclosure that can be looked at to support the design patent claim. The metes and bounds of the design patent claim are defined by solid lines, and in some cases broken line boundaries, and the surfaces within the solid lines and broken line boundaries; it is understood that broken line boundaries are not themselves part of the claim. 42 It would be impractical to describe the same metes and bounds of a design patent claim in words. 43 But at the same time, there is no missing disclosure in the drawing in the same sense that there can be missing disclosure in a utility patent application. In a design patent application, all portions of the article of manufacture that are shown in the drawings are disclosure that can support a later claim to any or all portions or areas illustrated therein. 41 Of course, the original disclosure also includes the specification, figure descriptions, and any Appendix included in the application as filed. The Appendix filed with the later application (A23-24; A41-42) is part of the original disclosure. 42 See note In Egyptian Goddess v. Swisa, 543 F.3d 665, 679 (Fed. Cir. 2008), this Court recognized the folly of attempting to describe a design in words. 34

41 Case: Document: 27 Page: 41 Filed: 05/23/2012 The Board here further argues: [T]he claim on appeal is broader than the subject matter originally claimed in the '709 application. The design shown in solid lines in the originally-filed drawing of the '709 application is within the scope of the claim on appeal. On the other hand, the claim on appeal is not limited to the design shown in solid lines in the originally-filed drawing of the '709 application. The drawing figures of the '709 application merely disclose an example of a design (or a small range of examples of designs) encompassed by the range of designs claimed in the claim on appeal. (A9.) The question of whether the claim on appeal is broader or narrower than the subject matter originally claimed in the earlier application is irrelevant to the determination of the issue now on appeal. 44 Design patents claims are not related in a hierarchical fashion like the independent/dependent, broad/narrow claims of a utility patent. Each design patent claim has its own, unique and different scope. It is that scope which forms the overall impression against which issues such as infringement and validity are decided. 45 In the present case, the earlier application discloses (and happens to claim) an overall bottle design, while the later application claims a portion of the overall 44 Appellants below did posit that the claims in the earlier and later applications had a broad/narrow relationship. Appellants now believe that a broad/narrow relationship for design patent claims is not a proper characterization. 45 See Robert S. Katz, Design Patents, in DRAFTING PATENTS FOR LITIGATION AND LICENSING 561, (Bradley C. Wright ed. 2008). 35

42 Case: Document: 27 Page: 42 Filed: 05/23/2012 bottle design. The Board s argument regarding Lukach rests on its erroneous supposition that the later application contains a broad claim (to a range of designs ), while the earlier disclosure has but a narrow example/claim that is encompassed by the broad claim on appeal. This analogy fails since one claim is not broader, and the other is not narrower. This is because different overall impressions are formed by the respective claimed portions. In the present case, the claim in the earlier application to the overall impression created by the entire bottle can be infringed by a product that would not necessarily infringe the claimed design to the portion of the bottle in the later application. This would absolutely not be true if an earlier utility patent application contained a narrow claim that fell completely within the scope of a broad claim in the later application. This situation also occurs with dependent claims in a utility patent, where a product that infringes a narrow dependent claim by definition must infringe the broader claim upon which it depends. Thus, the broad-narrow shorthand of utility patent claims does not apply to design patents. And the Board s logic regarding Lukach is therefore inapposite to the issue on appeal. An example should suffice to demonstrate the point. Consider the following hypothetical design patent situation: 36

43 Case: Document: 27 Page: 43 Filed: 05/23/2012 FIG. X FIG. Y FIG. Z In the drawings above, Fig. X is equivalent to Fig. 2 of the design claimed in the earlier application in this case. Fig. Y is Fig. 2 of the design as originally filed in the later application. Fig. Z is a hypothetical product accused of infringing the two hypothetical design patents respectively claiming FIG. X and FIG. Y. Although one might be tempted to describe FIG. Y as a broad claim that reads on or encompasses the narrow claim of FIG. X, that is simply not a proper characterization. This is so because the accused product FIG. Z can easily be held to infringe the allegedly narrow claim FIG. X, since overall they appear substantially the same, while FIG. Z avoids the allegedly broad claim of FIG. Y. 37

44 Case: Document: 27 Page: 44 Filed: 05/23/2012 This becomes clear when considering the enlarged views below of the claimed crescent of FIG. Y next to the corresponding portion of FIG. Z: FIG. Y FIG. Z FIG. Y and the corresponding portion of FIG. Z are clearly dissimilar in overall visual impression, and thus FIG. Y is not likely to be found infringed by the product shown in FIG. Z. Yet, the entire bottle of FIG. Z can be regarded as substantially the same overall as the design claimed in FIG. X and thus infringing. So, the purportedly broad claim of FIG. Y is not likely to be found infringed by FIG. Z, while the purportedly narrow claim of FIG. X, that clearly includes the portion claimed in FIG. Y, is likely to be found infringed. As noted above, in a utility case, if a product infringes a narrow claim, it by definition would infringe a broader claim from which the narrow claim is dependent. As can be seen by the foregoing example, such a relationship does not necessarily exist in the design patent context. 38

45 Case: Document: 27 Page: 45 Filed: 05/23/2012 In arguing the relevance of Lukach, the Board here concludes: The conclusion to be drawn from the holding of Lukach is that an example disclosed in a parent case does not necessarily describe a subsequently claimed range which contains the example. Therefore, the mere fact that the 709 application discloses an example of a design (or small range of designs) within the scope of the claim on appeal does not persuade us that the 709 application describes the subject matter of the claim on appeal. The Examiner correctly finds that particular range of designs claimed in the claim on appeal was not described in the 709 application. (A10-11.) Again, it must be kept in mind that the sole question in the case on appeal is whether the design patent claim of the later application is supported by the disclosure in the earlier application. Contrary to the Board s assertion, the claimed design on appeal cannot be characterized as claiming a range of designs. The claimed design is the appearance of a single design consisting of the surface areas within the solid and broken line boundaries (and including the solid lines) as shown in the drawings. The earlier application does not disclose a specific example as argued by the Board, but rather a very large number of different designs that will support later design patent claims to a portion or combination of such portions. The earlier application claims only one such design from this large number, but it discloses a wide variety of designs that can support later claims, such as the claim on appeal. Similarly, the later application discloses a large 39

46 Case: Document: 27 Page: 46 Filed: 05/23/2012 number and variety of designs, but only claims a single design - certainly not a range of designs. For these reasons, the Board s arguments regarding Lukach fail to support its argument that the article of manufacture disclosed in the earlier application does not disclose the design claimed in the later application. H. The Rejection of the Claimed Design Under 35 U.S.C. 103(a) over a Reference is Inconsistent with Finding that the Claimed Design is Insufficiently Disclosed by the Same Reference As noted above, the rejection of the claimed design under 103(a) based on an admitted sale of a bottle as shown in the 515 patent over one year prior to the filing date of the later application 46 falls if Appellants are entitled to claim priority to the earlier application under 120, for in that event the sale of a bottle as shown in the 515 patent is not prior art to the later application. 47 Shown below on the left is the full bottle design from the 515 patent, the commercial version of which was admittedly on sale over one year prior to the filing date of the later application, while the claimed design is shown on the right. 46 But not the earlier application. 47 See note 7. The arguments advanced by the Examiner are the same, i.e., that the admitted prior art renders the claimed design unpatentable, regardless if the rejection is under section 102(b) or 103(a). 40

47 Case: Document: 27 Page: 47 Filed: 05/23/2012 FIG. 2 FIG. 2 41

48 Case: Document: 27 Page: 48 Filed: 05/23/2012 Paragraph 12 of the Examiner s Office action of 01/09/2009 states: The bottle of the admitted prior art, shows the design of the entire bottle, as well as the designs for all portions of its components. Therefore the appearance of any shape created by an arbitrarily selected portion of the bottle will necessarily find a counterpart having precisely its same design characteristics in the whole bottle design illustrated in D531,515. In whatever way one may divide up the surface of the bottle, the result will be present in the admitted prior art. (A181.) This position of the Examiner is inconsistent with her position that the partial bottle design claimed in the later application is not disclosed in the earlier application that illustrates the full bottle. These two positions in effect create an untenable double standard. The Examiner s stated position regarding her 35 U.S.C. 103(a) rejection supports a reversal of her 35 U.S.C. 112, paragraph 1 rejection. The Examiner argues that the 515 patent (the patent that issued from the earlier application) shows the design of the entire bottle, as well as the designs for all portions of its components. (A181.) This is precisely Appellants position regarding the section 112 rejection, namely, that their earlier application shows the design for all portions of its components, including the side and upper portion claimed in the later application. 42

49 Case: Document: 27 Page: 49 Filed: 05/23/2012 The Examiner further states that the appearance of any shape created by a portion of the bottle will necessarily find a counterpart having precisely its same design characteristics in the 515 patent. (A181.) Again, Appellants agree. It is prima facie true that the presently claimed design, created or carved out of a portion of the bottle as shown in the 515 patent, has a counterpart fully disclosed in the 515 patent. Finally, as if for emphasis, the Examiner states that In whatever way one may divide up the surface of the bottle, the result will be present in the [ 515 patent]. Appellants could not agree more. (A181.) By the Examiner s own admission, the 515 patent fully discloses the side and upper portion of the bottle that is now claimed in this later application, and thus the first paragraph of section 112 of the statute is satisfied, and Appellants are entitled to claim priority in the present application to the earlier application under 120. The Board s entire discussion of this issue consisted of the following: There is no conflict between the finding that the 709 [earlier] application failed to provide a written description of the subject matter of the claim on appeal and the conclusion that the subject matter of the claim on appeal would have been obvious from the bottle placed on sale more than a year before the filing date of the underlying 43

50 Case: Document: 27 Page: 50 Filed: 05/23/2012 application. (See also Lukach, 442 F.2d at (pointing out the distinction between the anticipation of a range by a single example and an allegation that the example describes the range). (A13.) The Board s reliance on Lukach is again misplaced. One can easily see that there is no inconsistency between stating that Lukach s single example of a ratio of 2.6 Mw/Mn does not anticipate a claimed range of 2.0 to 3.0 Mw/Mn and the claimed range of is not supported in a 112 sense by the single example of 2.6, as held by this Court in Lukach 48. This is not the same as saying that the presently claimed partial bottle design is anticipated or rendered obvious by the full bottle and the full bottle does not disclose the partial bottle design, as stated by the Examiner and Board. In other words, Appellants agree that the presently claimed partial bottle design is anticipated or rendered obvious by the full bottle, and is thus unpatentable, in the event they are not entitled to the benefit of the filing date of the earlier application under 120. The Examiner and Board s assertion of the 103(a) rejection while at the same time saying the full bottle does not disclose the partial bottle is patently inconsistent. If the admitted prior art full bottle anticipates or renders the claimed partial bottle design obvious, then pretty clearly that same full bottle design discloses the claimed partial bottle design. And if the same full bottle design 48 Lukach, supra note 10 at

51 Case: Document: 27 Page: 51 Filed: 05/23/2012 discloses the claimed partial bottle design, then the anticipation/obviousness rejection falls since Appellants are then entitled to the filing date of the full bottle 515 patent (the earlier application) so as to remove its disclosure of the full bottle, and admitted sale, as prior art. The double standard between 112, 1 on the one hand, and 102/103 on the other, insofar as it is being applied in a design patent context, must fall. rebuffed it: The Appellant in Lukach made the same argument, and the Court there This argument appears to overlook the law that the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes [citation omitted], whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure [citation omitted]. 49 The Lukach court in turn relied on In re Hafner, where the Appellant raised precisely the same argument: [A]ppellant is contending that a double standard should not be applied in determining the adequacy of a disclosure to anticipate under 102, on the one hand, and to support the patentability of a claim under 112 on the other Lukach, supra note 10 at F.2d 1403, 1426 (CCPA 1969). 45

52 Case: Document: 27 Page: 52 Filed: 05/23/2012 The predecessor to this Court in Hafner characterized the double-standard assertion as a plausible proposition, but rejected it on the ground that 112 requires the earlier specification to enable one skilled in the art to use the invention whereas 102 makes no such requirement as to an anticipatory disclosure. 51 Of course, the requirement of 112 that a utility patent disclosure must teach one how to make and use the invention makes no sense in the context of design patents, for several reasons. First, usefulness is a requirement of 35 U.S.C. 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 52 The requirements for a design patent are defined by another section of the statute, namely 35 U.S.C. 171: Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. 53 A design must be new, original and ornamental, rather than useful, to constitute statutory subject matter. Simply stated, 101 does not apply to design 51 Hafner, supra note 50 at Emphasis added. 53 Emphasis added. 46

53 Case: Document: 27 Page: 53 Filed: 05/23/2012 patents. Logically, the language of 112, 1 regarding make and use also does not apply to design patents. What makes sense is that the design patent specification, including the drawings, must teach a designer of ordinary skill in the art what the claimed design looks like. In other words, in view of the useful requirement in 101, it makes perfect sense in a utility patent application that it is necessary for the specification to contain a written description of the invention and of the manner and process of making and using it. And it also makes sense that the latter phrase is inapposite to design patents, in which the drawings (i.e., written description) more logically only need to convey what the claimed design looks like, rather than how it is made or used. Second, as evidence of the foregoing, there exists no design patent disclosure none that contains any teaching of how to make and use a claimed design. There is no discussion in Chapter 1500 of the M.P.E.P. ( Design Patents ) about the make and use requirement of 112, 1, implicitly recognizing that it does not apply. Finally, this dichotomy between the treatment of utility patents and design patents was recognized in In re Mann by Judge Rich who, in the context of 47

54 Case: Document: 27 Page: 54 Filed: 05/23/2012 discussing the public use of a claimed design, said: The only use possible for an ornamental design is its embodiment, exhibition, and observation. 54 The 103(a) rejection, as articulated by the Examiner herself, mandates reversal of the 112 rejection. VIII. CONCLUSION AND STATEMENT OF RELIEF SOUGHT Appellants are entitled to claim priority under 35 USC 120 from their earlier application because everything now being claimed as Appellants design is visibly apparent in the earlier application in accordance with 35 USC 112, 1. Under the settled case law of In re Daniels, a change in the claim in a later design application does not raise an issue of new matter as long as what is being claimed in the later application is a reasonably identifiable part of the original drawing disclosure in the earlier application. In Daniels, the applicant s later application claimed a reasonably identifiable portion of the design disclosed in the earlier application. This Court found that a designer of ordinary skill in the art would clearly recognize that Daniels designed the entire container, despite the fact that portions thereof were hidden under surface decoration in the earlier application, and thus were not exactly identified in the earlier application. In the present case, it is exactly disclosed F.2d 1581, 1581 (Fed. Cir. 1988). 48

55 Case: Document: 27 Page: 55 Filed: 05/23/2012 In re Lukach is inapposite in that it fails to take into account the inherent differences between utility patent claims and design patent claims. The claimed design on appeal cannot be characterized as claiming a range of designs in the same way that the applicant in Lukach claimed a range of copolymers. The claim on appeal is to a single design shown in the drawings; the earlier application discloses a wide variety of designs that support not only the claim on appeal, but a wide variety of claims. The fact that a bottle made as disclosed in the earlier application would infringe the claim in the later application is not determinative, since it is the disclosure of the earlier application that is central to the present appeal. Finally, and perhaps most tellingly, the PTO s position that whatever portion of the bottle that is now being claimed in this later application finds a counterpart in the bottle as shown in the earlier application (the 515 patent), and is therefore obvious thereover, is an admission that the claimed design is fully disclosed in the earlier application. Reversal of the Board s affirmance of the Examiner s rejections under 35 U.S.C. 112, first paragraph, and 35 U.S.C. 103(a) is believed in order. 49

56 Case: Document: 27 Page: 56 Filed: 05/23/2012 Respectfully submitted, SAIDMAN DesignLaw Group 8601 Georgia Avenue, Suite 603 Silver Spring, MD (301) Perry J. Saidman Attorney for Appellants 50

57 Case: Document: 27 Page: 57 Filed: 05/23/2012 ADDENDUM

58 Case: Document: 27 Page: 58 Filed: 05/23/2012 A1

59 Case: Document: 27 Page: 59 Filed: 05/23/2012 A2

60 Case: Document: 27 Page: 60 Filed: 05/23/2012 A3

61 Case: Document: 27 Page: 61 Filed: 05/23/2012 A4

62 Case: Document: 27 Page: 62 Filed: 05/23/2012 A5

63 Case: Document: 27 Page: 63 Filed: 05/23/2012 A6

64 Case: Document: 27 Page: 64 Filed: 05/23/2012 A7

65 Case: Document: 27 Page: 65 Filed: 05/23/2012 A8

66 Case: Document: 27 Page: 66 Filed: 05/23/2012 A9

67 Case: Document: 27 Page: 67 Filed: 05/23/2012 A10

68 Case: Document: 27 Page: 68 Filed: 05/23/2012 A11

69 Case: Document: 27 Page: 69 Filed: 05/23/2012 A12

70 Case: Document: 27 Page: 70 Filed: 05/23/2012 A13

71 Case: Document: 27 Page: 71 Filed: 05/23/2012 A14

72 Case: Document: 27 Page: 72 Filed: 05/23/2012 CERTIFICATE OF SERVICE United States Court of Appeals for the Federal Circuit No (Serial No. 29/253,172) ) IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP. E. HAGUE, ) I, John C. Kruesi, Jr., being duly sworn according to law and being over the age of 18, upon my oath depose and say that: Counsel Press was retained by SAIDMAN DESIGNLAW GROUP, Attorneys for Appellants to print this document. I am an employee of Counsel Press. On the 14 th Day of May, 2012, I served the within Brief for Appellants upon: Raymond T. Chen Patent and Trademark Office P.O. Box 1450 Mail Stop 8 Alexandria, VA (571) via Express Mail, by causing 2 true copies of each to be deposited, enclosed in a properly addressed wrapper, in an official depository of the U.S. Postal Service. Unless otherwise noted, 12 copies have been hand-delivered to the Court on the same date as above. May 14, 2012

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