(Serial No. 29/253,172) IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E.

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 1 Filed: 08/24/2012 2012-1261 (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 APPELLEE DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE RAYMOND T. CHEN Solicitor LYNNE E. PETTIGREW WILLIAM LAMARCA Associate Solicitors Office of the Solicitor Mail Stop 8 U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 272-9035 August 24, 2012 Attorneys for the Director of the United States Patent and Trademark Office

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 2 Filed: 08/24/2012 Claim on Appeal A2; A172-174.

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 3 Filed: 08/24/2012 TABLE OF CONTENTS Page I. STATEMENT OF THE ISSUES... 1 II. STATEMENT OF THE CASE... 1 III. STATEMENT OF THE FACTS... 3 A. The Claim on Appeal and the Prosecution History... 3 1. Application No. 29/219,709: The Original Application... 3 2. Application No. 29/253,172: The Claim on Appeal... 5 B. The Examiner s Rejection... 7 C. The Board s Decision... 8 IV. SUMMARY OF THE ARGUMENT... 12 V. ARGUMENT... 14 A. Standard of Review...14 B. Design Patent Law...15 C. The 709 Application Fails to Provide Sufficient Written Description Support for the Claimed Design Because It Does Not Disclose the Claimed Trapezoidal Section...16 D. Owens s Additional Arguments Fail to Show Error in the Board s Decision...23 1. The Rejection Is Not Inconsistent With USPTO Practice Regarding Addition of Broken Lines...23 2. USPTO Practice Does Not Prevent the Use of Continuations to Claim Designs That Were Adequately Disclosed in an Earlier Design Application...25 3. Owens s Argument Regarding Lukach Does Not Show Reversible Error...28 i

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 4 Filed: 08/24/2012 4. The Rejection Under 103(a) Is Not Inconsistent with the Board s Finding That the Claimed Design Is Not Sufficiently Disclosed in the 709 Application...29 VI. CONCLUSION... 32 ii

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 5 Filed: 08/24/2012 TABLE OF AUTHORITIES Cases Page(s) Alonso, In re, 545 F.3d 1015 (Fed. Cir. 2008)... 14 Alton, In re, 76 F.3d 1168 (Fed. Cir. 1996)... 22 Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)... 14, 17, 21 Blum, In re, 374 F.2d 904 (CCPA 1967)... 15, 23 Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938)... 14 Daniels, In re, 144 F.3d 1452 (Fed. Cir. 1998)...passim Jolley, In re, 308 F.3d 1317 (Fed. Cir. 2002)... 14 Kotzab, In re, 217 F.3d 1365 (Fed. Cir. 2000)... 14 Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)... 31 Lukach, In re, 442 F.2d 967 (CCPA 1971)... 10, 11, 13, 28, 29, 31 Salmon, In re, 705 F.2d 1579 (Fed. Cir. 1983)... 31 SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006)... 17 Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)... 17 Watts, In re, 354 F.3d 1362 (Fed. Cir. 2004)... 14, 29 Wertheim, In re, 541 F.2d 257 (CCPA 1976)... 10, 22 Zahn, In re, 617 F.2d 261 (CCPA 1980)... 15, 23 iii

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 6 Filed: 08/24/2012 Statutes 35 U.S.C. 103...passim 35 U.S.C. 112...passim 35 U.S.C. 120...passim 35 U.S.C. 171... 15 Regulations 37 C.F.R. 1.152... 4, 15 37 C.F.R. 1.153... 15 Other MPEP 1503.01... 15, 16, 23 MPEP 1503.02... 15, 16, 23, 24 iv

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 7 Filed: 08/24/2012 STATEMENT OF RELATED CASES The Director is not aware of any other appeal from the Board of Patent Appeals and Interferences (Board) for the United States Patent and Trademark Office (USPTO) in connection with this case that has previously been before this court. The Director is also unaware of any other case pending in this or any other court that will directly affect, or be directly affected, by the Court s decision in this appeal. v

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 8 Filed: 08/24/2012 I. STATEMENT OF THE ISSUES Under 35 U.S.C. 120, a claim in a continuation application is entitled to the benefit of the filing date of a parent application only if the claimed subject matter is described in the earlier application in a matter that complies with the written description requirement of 35 U.S.C. 112, 1. This rule applies to design patents as well as utility patents. The issue on appeal is whether substantial evidence supports the Board s finding that an earlier disclosure of a full bottle design does not provide adequate written description support for a later-claimed partial bottle design, which includes a broken boundary line dividing the front panel of the full bottle to create a trapezoidal shape, altering its design in a way that was not contemplated by the inventors at the time of the earlier disclosure. If the earlier disclosure does not provide adequate written description support for the claim on appeal, and therefore the claim is not entitled to the benefit of the filing date of the parent application, Owens admits that the claim on appeal is unpatentable under 35 U.S.C. 103. II. STATEMENT OF THE CASE Timothy S. Owens, Sheila M. Kelly, Robert M. Lynch, IV, Jason C. Campbell, and Philip E. Hague (collectively, Owens) filed the instant design patent 1

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 9 Filed: 08/24/2012 application for a Portion of a Bottle on February 2, 2006. A20-27. 1 The application is a continuation of an earlier application that was filed on December 21, 2004. A228-32. On October 29, 2008, Owens amended the claimed design in the instant application by adding a broken boundary line altering the design. A167-74. The Board affirmed the Examiner s finding that the amended claim was not entitled to the benefit of the parent application s filing date under 35 U.S.C. 120 because the earlier disclosure failed to provide adequate written description support for the claimed design under 35 U.S.C. 112, 1. A8-13. Because the claim was not entitled to the benefit of the 2004 filing date of the parent application, the Board affirmed the Examiner s rejection of Owens s claim under 35 U.S.C. 103(a) in view of a bottle embodying the claimed design that was on sale more than one year before the 2006 filing date of the present application. A13. The Board also affirmed the Examiner s rejection of the amended claim under 35 U.S.C. 112, 1, because the disclosure of the present application as filed in 2006 failed to provide adequate written description support for the claimed design as amended in 2008. A14. This appeal followed. 1 A refers to pages of the Joint Appendix; Br. at refers to pages of Owens s opening brief. 2

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 10 Filed: 08/24/2012 III. STATEMENT OF THE FACTS A. The Claim on Appeal and the Prosecution History Owens filed the present application, 29/253,172 (the 172 application), on February 2, 2006. A20-27. The 172 application is a continuation of application 29/219,709 (the 709 application), filed on December 21, 2004. 2 A228-32. On October 29, 2008, Owens amended the claimed design in the 172 application. A167-74. The amended claim is the claim on appeal. A2. Owens alleges that the amended claim is entitled to the benefit of the earlier filing date of the 709 application in accordance with 35 U.S.C. 120. A4. 1. Application No. 29/219,709: The Original Application The earlier 709 application discloses a design for a bottle as shown below in Figures 1, 2, and 3 (perspective view, front view, and side view, respectively). A5; A231-32. The bottle includes substantially pentagonal, downwardly pointing front and back panels. A3; A231-32; A230 ( The back is the same in appearance as the front. ). Among other features, the bottle also includes narrow triangular facets adjacent to the upper side edges of the front and back panels and crescent-shaped surfaces adjacent to the upper edges of the front and back panels. A3; A231-32. While the figures disclose an entire bottle, any portion shown in dotted or broken 2 The 709 application issued on November 7, 2006, as U.S. Patent No. D531,515 (the 515 patent). A313-15. 3

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 11 Filed: 08/24/2012 lines (e.g., the cap portion) is not part of the design that was claimed in the 709 application as filed. See 37 C.F.R. 1.152 ( Broken lines may be used to show visible environmental structure. ). 4

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 12 Filed: 08/24/2012 2. Application No. 29/253,172: The Claim on Appeal The later 172 application as filed in 2006 discloses the same design for a bottle as its parent, the 709 application. A7; A25-27. On October 29, 2008, Owens amended the sole claim of the 172 application by submitting the following drawings, Figures 1, 2, and 3. A2; A172-74. The amended claim, which is the claim on appeal, is directed to a portion of a bottle that includes the crescent-shaped surface adjacent to the front and back panels and narrow triangular portions adjacent to the upper side edges of the front and back panels, both shown in solid lines. A3. These portions are shown in green 5

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 13 Filed: 08/24/2012 in the figure below, modified for illustrative purposes. The claim on appeal also includes a trapezoidal area on the front and back panels. Id. The horizontal dashdot broken line that divides the panel is an unclaimed boundary line indicating that the shaded trapezoidal area above the line is part of the claimed design, though the broken line itself is not part of the claim. Id. The trapezoidal section is shown in orange in the modified figure below. The remaining sections of the front and back panels form no part of the claimed design. Id. 6

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 14 Filed: 08/24/2012 B. The Examiner s Rejection During prosecution, Owens asserted that the claim on appeal was entitled to the benefit of the filing date of the 709 application. Owens also admitted that if the claim did not receive the benefit of the earlier filing date, the claim would be unpatentable in view of the admitted sale of a bottle having the design claimed in the 515 patent more than one year before the 2006 filing date of the 172 application. A205; A216. The Examiner found that the claim on appeal was not entitled to the benefit of the filing date of the 709 application under 35 U.S.C. 120 because the claimed design was not disclosed in the 709 application in a manner that satisfies the written description requirement of 35 U.S.C. 112, 1. A177-78. Specifically, the Examiner found that the trapezoidal shape on the front and back panels created by the dash-dot broken boundary line was not identified in the 709 application. A178. Therefore, the Examiner found, the earlier disclosure did not show that Owens was in possession of the later-claimed design at the time the 709 application was filed. Id. Because the claim on appeal was not entitled to the earlier filing date of the 709 application, the Examiner rejected the claim under 35 U.S.C. 103(a) as unpatentable over the bottle illustrated in the 515 patent, which Owens admitted was on sale more than one year before the filing date of the 172 application and rendered the claim unpatentable. A181-82; A216. 7

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 15 Filed: 08/24/2012 The Examiner also rejected the claim on appeal under 35 U.S.C. 112, 1, because the disclosure of the 172 application as originally filed in 2006 did not provide adequate written description support for the claimed design as amended in 2008. A214-15; A219-23. The Examiner applied the same reasoning that she used in denying Owens s benefit claim to the 709 application s filing date, viz., that there was no evidence that Owens was in possession of the trapezoidal shape defined by the insertion of the dash-dot broken line. A215; A219-220. C. The Board s Decision The Board affirmed the Examiner s decision rejecting the sole claim of the 172 application. A1-14. At the outset, the Board noted that Owens admitted that a bottle embodying the claimed design had been on sale more than one year before the filing date of the 172 application. A3-4. Thus, the Board recognized that the correctness of the Examiner s 103(a) rejection depended on whether the claim on appeal was entitled to the benefit of the filing date of the 709 application. A4. That issue in turn hinged on whether the 709 application contained a written description adequate to convey to an ordinary designer that [Owens] possessed the subject matter of the claim on appeal as of the filing date of the 709 application. Id. Addressing that question, the Board found that Owens did not identify any feature or features in the figures of the original 709 application that might have 8

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 16 Filed: 08/24/2012 indicated to an ordinary designer that Owens had invented a design that included the substantially trapezoidally-shaped section present in the claimed design on appeal. A6 (FF 4). 3 The Board rejected Owens s argument that In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998), controlled the present case. A11-12. In Daniels, the Board observed, the Court found that an earlier design application disclosing a container with a surface decoration adequately described the later-claimed design of the container after the surface decoration was removed. Id. In contrast to the facts of Daniels, the Board found that the particular body portion which embodies the claim on appeal here is not merely a product over which a surface decoration has been applied and then removed. A12. Rather, the Board found that the claimed design included an additional design feature not found in the original disclosure: The particular body portion which embodies the claimed design is an arbitrary portion of the bottle not clearly visible as a separate portion distinguishable from the remainder of the surface area of the front and back panels. Id. The Board also adopted the Examiner s findings, reasoning, and conclusions addressing some of the other legal and policy arguments made by Owens. Id. (citing A220-23). For example, the Board adopted the Examiner s rejection of Owens s argument that the Manual of Patent Examining Procedure (MPEP) 3 FF refers to the Board s findings of fact. 9

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 17 Filed: 08/24/2012 supported the addition of the dash-dot line without raising any written description issues with respect to the earlier disclosure. A221-22. And, in response to Owens s argument that the USPTO was preventing applicants from setting forth that which they regard as their claimed design, as required by 35 U.S.C. 112, 2, the Examiner explained that [i]t is the examiner s duty to determine whether the design [appellants] now regard as their invention was disclosed in the application at the time it was filed. A222. Before the Board, Owens asserted that adding the unclaimed dash-dot boundary line broadened the scope of the claimed design, and that broadening the claim in that manner did not affect priority under 120. A9 (citing A194-96 (Appeal Brief)). In response, the Board analogized this situation to In re Lukach, 442 F.2d 967 (CCPA 1971), in which the CCPA held that a narrower disclosure of an example or species does not necessarily provide sufficient written description support for a broader claim directed to a range or genus. A10 (citing Lukach, 442 F.2d at 968). The Board also cited In re Wertheim, 541 F.2d 257, 263 (CCPA 1976), for the broader proposition that mechanical rules [are not] a substitute for an analysis of each case on its facts to determine whether an application conveys to those skilled in the art the information that the applicant invented the subject matter of the claims. A10-11. Applying these concepts, the Board concluded that Owens failed to point to any feature or features in the drawing figures of the 709 10

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 18 Filed: 08/24/2012 application which might have suggested that [Owens] had invented a design embodied in part, but not all, of the front and back panels. A11 (citing FF 4). Finally, with respect to the 103(a) rejection, the Board concluded that there was no conflict between the finding that the 709 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 [ 172] application. A13 (citing Lukach, 442 F.2d at 969-70). Finding that the claim on appeal was not entitled under 120 to the benefit of the filing date of the 709 application, the Board sustained the Examiner s 103(a) rejection in view of Owens s admission that the sale of a bottle embodying the claimed design more than one year before the filing date of the 172 application will render the claim unpatentable if Owens is not entitled to an earlier priority date. Id. Owens did not contest the rejection of the claim on appeal under 112, 1, separately from the 103(a) rejection. A14. Accordingly, for the same reasons that the 709 application did not sufficiently describe the claimed design, the Board found that the 172 application failed to provide sufficient written description support and sustained the rejection under 112, 1. Id. 11

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 19 Filed: 08/24/2012 IV. SUMMARY OF THE ARGUMENT Substantial evidence supports the Board s finding that the disclosure of a full bottle design in the earlier 709 application fails to provide sufficient written description support under 112, 1, for the later-claimed partial bottle design on appeal. The claim on appeal includes a trapezoidal section defined by a horizontal dash-dot boundary line dividing the front panel of the full bottle in a way that was not revealed in the original drawings of the 709 application. Nothing in the earlier disclosure suggests that an ordinary designer would recognize that Owens was in possession of the design feature now illustrated as of the filing date of the 709 application. This case is distinguishable from Daniels, in which the claimed design resulted from the removal of a surface decoration. The Court found that the earlier disclosure provided sufficient written description for the later-claimed design because all details of the claimed design were visible in the earlier drawings. In contrast to Daniels, Owens has not removed surface features. Instead, by removing a portion of the full bottle from his design by including a horizontal boundary line, Owens has added a new design feature that was never before revealed in the earlier drawings. Contrary to Owens s argument, the Board s finding that the 709 application fails to provide written description support for the claim on appeal is not 12

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 20 Filed: 08/24/2012 inconsistent with USPTO practice regarding the addition of broken lines. When an earlier disclosure shows that the inventor had possession of a claimed design that extends to a boundary, a broken boundary line may be added to clarify the extent of the claimed subject matter without violating the written description requirement. On the other hand, when the addition of a broken line boundary creates a new claimed design, and the earlier disclosure fails to show that the inventor had possession of that design at the time of the original disclosure, as in this case, the earlier disclosure does not provide adequate written description support for the amended claim. Owens s remaining arguments similarly lack merit. First, the Board s decision does not prevent an applicant from using the common practice of filing an application disclosing an entire product design and then using continuation applications to claim portions of the product design that were disclosed but not claimed in the original disclosure. Here, the later-claimed designs were not actually disclosed in the earlier application in a way that satisfies the written description requirement. Second, the Board s decision did not depend on its discussion of Lukach, which the Board cited only to rebut an argument that Owens has now abandoned. Finally, the rejection under 103(a) is not inconsistent with the Board s finding that the claimed design is not sufficiently disclosed in the 709 application. 13

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 21 Filed: 08/24/2012 V. ARGUMENT A. Standard of Review Owens has the burden to show that the Board committed reversible error. In re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). Whether a claimed invention is supported by an adequate written description under 35 U.S.C. 112, 1, is a question of fact. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, this Court must uphold the Board s fact findings regarding compliance with the written description requirement if they are supported by substantial evidence. In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support the conclusion reached. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). It is something less than the weight of the evidence but more than a mere scintilla of evidence. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). For example, where two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence. In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002). 14

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 22 Filed: 08/24/2012 B. Design Patent Law A design patent may be obtained for a new, original and ornamental design for an article of manufacture, subject to the conditions and requirements of title 35. 35 U.S.C. 171. The design may be embodied in an entire article of manufacture or only a portion thereof. In re Zahn, 617 F.2d 261, 267 (CCPA 1980). The subject matter of a design patent may relate to the surface ornamentation applied to an article, the configuration or shape of the article, or a combination of the two. Id. at 268. The drawings of a design patent provide the description of the invention. Daniels, 144 F.3d at 1456. A design patent may contain only a single claim, which must be to the ornamental design for the article (specifying name) as shown, or as shown and described. 37 C.F.R. 1.153(a). Solid lines in the drawings show the claimed design, whereas dotted and broken lines in the drawings may have different meanings but are not part of the claimed design. Zahn, 617 F.2d at 267; MPEP 1503.01 (III). Broken or dotted lines may be used to disclose structure that is not part of the claimed design but is necessary to show environment, including any portion of an article of manufacture in which the design is embodied that is not part of the claimed design. In re Blum, 374 F.2d 904, 907 (CCPA 1967); 37 C.F.R. 1.152; MPEP 1503.02 (III). A broken line may also represent the boundary of the claimed design, indicating that the claimed design extends to the boundary but 15

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 23 Filed: 08/24/2012 does not include the boundary line. MPEP 1503.02 (III). When broken lines are used, the specification must include a textual statement indicating the purpose of the broken lines and stating that they form no part of the claimed design. Id.; MPEP 1503.01 (II). C. The 709 Application Fails to Provide Sufficient Written Description Support for the Claimed Design Because It Does Not Disclose the Claimed Trapezoidal Section Owens admits that the claim on appeal is unpatentable [under 103(a)] in view of the earlier sale of an admitted prior art bottle, i.e., the one illustrated in [the 515 patent.], if the claimed design is not entitled to the benefit of the filing date of the 709 application under 35 U.S.C. 120. Br. at 2. To obtain the benefit of the earlier filing date, the later-claimed design must be described in the 709 application in a matter that complies with the written description requirement of 35 U.S.C. 112, 1. Daniels, 144 F.3d at 1456 (holding that that law of 120 applies to design patents as well as utility patents). Accordingly, the only issue on appeal is whether substantial evidence supports the Board s finding that the 709 16

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 24 Filed: 08/24/2012 application fails to provide adequate written description support for the claim on appeal. 4 To satisfy the written description requirement, the disclosure of an application must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed. Ariad, 598 F.3d at 1351. The test for sufficiency is whether the disclosure convey[s] with reasonable clarity to those skilled in the art that, as of the filing date..., [the inventor] was in possession of the [claimed] invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). When the issue is whether an earlier design application provides sufficient written description support for a later-claimed design, the inquiry is whether the earlier disclosure the original drawings and any associated descriptions shows that the inventor had possession at the earlier date of what was claimed later. Daniels, 144 F.3d at 1456. Substantial evidence supports the Board s finding that the disclosure in the earlier 709 application does not adequately describe the later-claimed design. A6-4 Owens does not separately address the Board s affirmance of the Examiner s rejection under 112, 1, conceding that the ultimate issue hinges on whether the claimed design was disclosed in the earlier application. Br. at 21 n.22. As a result, the Director will address only whether the disclosure in the 709 application provides sufficient written description support for the claim on appeal. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) ( Our law is well established that arguments not raised in the opening brief are waived. ). 17

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 25 Filed: 08/24/2012 7; A12-13. Here, as shown below, the claim on appeal includes a trapezoidal section occupying the portion of the front panel above the horizontal broken boundary line. A2. Although the boundary line itself is not part of the claim, it nevertheless divides the front panel in a way that defines a separate, trapezoidal portion of the panel that 18

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 26 Filed: 08/24/2012 was not discernible in the 709 disclosure, which disclosed front and back panels that were pentagonally-shaped. A12. That is, with the boundary line added, a design feature is now illustrated that never before was revealed in Owens s earlier drawings. As the Board and the Examiner correctly found, there is nothing in the earlier disclosure suggesting that an ordinary designer would recognize that Owens was in possession of a partial bottle design having a front panel subdivided to create a trapezoidal section as of the filing date of the 709 application. A13; A217-18. Contrary to Owens s argument, Br. at 18-20, Daniels does not control the result in this case. As the Board explained, the facts here are distinguishable from those in Daniels. A11-12. The earlier design application in Daniels disclosed a container decorated on each side with a pattern of leaves. 144 F.3d at 1454. In a continuation application, Daniels amended the claim to remove the leaf pattern from the drawing. Id. at 1454-55. The Court found that the container as an article of manufacture [was] clearly visible in the earlier design application, demonstrating to the artisan viewing that application that Mr. Daniels had possession at that time of the later claimed design of that article. Id. at 1456-57. Significantly, the Court found that all details of the claimed design were visible in the drawings of the earlier application. Id. at 1457. Thus, although in Daniels 19

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 27 Filed: 08/24/2012 surface design features were removed, all the details of the later-claimed design were present in the earlier drawings. Id. Unlike the disclosure in Daniels, the drawings of the 709 application fail to show all the details of the claimed design. A12. Specifically, the 709 disclosure does not illustrate a design including a trapezoidal section that occupies some, but not all, of the front panel. Id. Further, in contrast to Daniels, Owens has not removed surface features, but by including a horizontal dash-dot line, Owens has added a new design feature that was never before revealed in his earlier drawings. As the Board put it, [t]he particular body portion which embodies the claimed design is an arbitrary portion of the bottle not clearly visible [in the 709 disclosure] as a separate portion distinguishable from the remainder of the surface area of the front and back panels. Id. Owens argues that Daniels is analogous to the present case because in both cases the later-claimed design is the result of removing or disclaiming a portion of the product shown in the earlier disclosure. Br. at 20. But Owens is reading Daniels too broadly. The portion of the earlier-disclosed article that was removed in Daniels was a surface decoration, resulting in a claimed design in the form of a product shape that itself was clearly visible in the earlier disclosure. 144 F.3d at 20

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 28 Filed: 08/24/2012 1457. 5 In contrast, to the extent that Owens has disclaimed portions of the originally-disclosed bottle, he has done so by adding a horizontal dash-dot boundary line, resulting in a new design shape that was not shown in the earlier disclosure in such a way that an ordinary designer would recognize that Owens had possession of it. A12. Owens also alleges that because 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. Br. at 24. Owens further argues that [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. Id. Owens s proffered analysis, however, has no basis in the law. The proper inquiry is whether a designer of ordinary skill viewing only the earlier application would understand that the inventor had possession of the later-claimed design when the earlier application was filed. Ariad, 598 F.3d at 1351; Daniels, 144 F.3d at 1456-57. As the Board correctly found, Owens has not pointed to anything in the 709 disclosure that would suggest to an ordinary designer that Owens had possession of 5 In fact, the surface decoration that was later removed had actually been added to the inventor s original design by his previous counsel and was clearly distinct from the underlying product design. Daniels, 144 F.3d at 1454. 21

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 29 Filed: 08/24/2012 a design for a portion of a bottle that includes only the upper trapezoidal section of the front and rear panels. A12-13. The bottom line is that the claimed design on appeal was nowhere revealed in any of Owens s earlier drawings. Finally, there is no merit to Owens s argument that the USPTO improperly shifted to Owens the burden of presenting evidence or argument regarding the written description requirement. Br. at 23. As Owens points out, the Examiner had the initial burden of presenting evidence or reasons why a designer skilled in the art would not recognize in the earlier 709 disclosure a description of the laterclaimed design. See In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (citing Wertheim, 541 F.2d at 263). Here, there is no question that the Examiner carried her burden by explaining that the newly introduced unclaimed boundary line defined a new design with a trapezoidal shape that could not have been identified in the 709 disclosure. A178; A217-18. At that point, the burden properly shifted to Owens to explain how an ordinary designer would recognize in the 709 application a design including a trapezoidal area on the front and rear panels. Alton, 76 F.3d at 1175. Because Owens failed to provide a satisfactory explanation, substantial evidence supports the finding that the 709 application does not provide sufficient written description support for the later-claimed design. A12-13. 22

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 30 Filed: 08/24/2012 D. Owens s Additional Arguments Fail to Show Error in the Board s Decision 1. The Rejection Is Not Inconsistent With USPTO Practice Regarding Addition of Broken Lines As discussed above, broken lines may be used in design patents for various purposes. Zahn, 617 F.2d at 267; Blum, 374 F.2d at 907; MPEP 1503.01 (III); MPEP 1503.02 (III). One use is to define the bounds of a claimed design... when the boundary does not exist in reality. MPEP 1503.02 (III). The MPEP provides that such an unclaimed straight boundary line may be added during prosecution to connect the ends of existing solid lines when it is evident in the originally filed application that the claimed design extends to the boundary. Id. This use of broken lines simply allows an already existing boundary of a design to be better visualized. In contrast, as the Examiner found, the broken boundary line that Owens added in this case did not connect the ends of two solid lines and therefore was not the type of amendment explicitly permitted by the MPEP. A221-22. Rather, the broken line added by Owens defined a new boundary of a new design feature that was never before revealed. Id. Owens alleges that an applicant should be allowed to add straight broken line boundaries anywhere in his drawings, at any time, without any consequences. Br. at 27-28. What Owens fails to recognize is that the purpose of the cited MPEP section is to provide for the addition of a broken boundary line to clarify the scope 23

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 31 Filed: 08/24/2012 of a design that has already been disclosed and claimed, i.e., to explicitly show a boundary of the claimed design that would have been recognized by an ordinary designer viewing the original disclosure and claim. MPEP 1503.02 (III). That is quite different from adding an arbitrary broken boundary line to claim a new design that was not described in the earlier disclosure, which is what Owens is attempting to do here. Owens further argues that there is no legal distinction as to why it is permissible to add a straight broken line boundary in some situations and not in others. Br. at 28. The relevant question is not what is permitted by the MPEP, however, but whether the claimed design that results from the added boundary line has sufficient written description support in the earlier disclosure under 112, 1. When it is apparent from the original disclosure that the inventor had possession of a claimed design that extends to a boundary, a broken line added to clarify the extent of the claimed subject matter would not run afoul of the written description requirement of 112, 1. That is the situation discussed in MPEP 1503.02 (III). On the other hand, when the addition of a broken line boundary creates a new claimed design, and the original disclosure does not show that the inventor had possession of that design at the time of the original disclosure, there is no written description support for the amended claim in the earlier disclosure. That is the situation in the present case. Thus, contrary to Owens s argument, there is no 24

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 32 Filed: 08/24/2012 inconsistency between the MPEP and the position of the Board and the Examiner in this case. 2. USPTO Practice Does Not Prevent the Use of Continuations to Claim Designs That Were Adequately Disclosed in an Earlier Design Application Owens argues that a design patent applicant should be able to disclaim any portion of a design in a continuation application and still have the benefit of the filing date of the parent application. Br. at 30-31. In a similar vein, amicus curiae Method Products, Inc. (Method) urges that a drawing for a complete product provides 112, 1, support for a later claim to any portion of the product created by adding an unclaimed boundary line. Amicus Br. at 14-15. Owens further alleges that a contrary rule would effectively prevent the common practice of using continuation applications to claim inventions that were disclosed but not claimed when the earlier application was filed. Br. at 30-31. But that is precisely the point Owens never before disclosed the particular design that he now claims. That is, the common practice to which Owens refers has not been violated. The law is clear that a design claimed in a continuation application is entitled to the benefit of the filing date of the parent application only if the earlier application discloses the later-claimed design in a way that satisfies the written description requirement of 112, 1. Daniels, 144 F.3d at 1456. In order to comply with that requirement, the earlier disclosure must convey to one skilled in 25

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 33 Filed: 08/24/2012 the art that the inventor had possession at that time of the later-claimed design. Id. In other words, it must be clear from the earlier disclosure that the inventor had actually contemplated and invented the later-claimed design as of the earlier filing date. Id. Thus, if the inventor later claims a specific portion of the earlierdisclosed design by inserting an unclaimed boundary line, the written description requirement is met only if the earlier disclosure clearly conveys that the inventor contemplated dividing the design along that boundary at the time of the original disclosure. Under this rule of law, if an applicant files an initial application disclosing a design for a complete product, any continuations claiming designs for different portions of the product are entitled to the benefit of the original filing date as long as the disclosure shows that the applicant initially had possession of those designs (i.e., the different portions later claimed were earlier disclosed). Therefore, contrary to Owens s contention, applicants are not prevented from using the common practice of filing continuation applications to claim designs that were actually disclosed in the earlier application, i.e., disclosed in a way that satisfies the written description requirement of 112, 1. Furthermore, the USPTO s approach is not based on a surreptitious or undocumented policy, as alleged by Method. Amicus Br. at 12, 14. The USPTO is simply enforcing the patentability requirements, including the law of written 26

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 34 Filed: 08/24/2012 description, in accordance with this Court s precedents. A later-claimed design to a portion of a product created by the insertion of a new boundary line has sufficient written description support only if the earlier disclosure shows that the inventor had possession of the particular portion of the product design now being claimed. See Daniels, 144 F.3d at 1456. Regardless of whether the USPTO allowed claims in other applications that Method alleges it should not have, Amicus Br. at 9-10, the USPTO s rejection of Owens s claim in this case was proper. Owens also argues that finding no written description support in the 709 application for the trapezoidal section is inconsistent with the Examiner s finding that the narrow triangular regions on the sides of the bottle in the claimed design are fully supported. Br. at 28-29. But as the Examiner correctly found, the narrow triangular areas are clearly recognizable in the original disclosure, whereas the trapezoidal area was not originally illustrated. A219. Owens further alleges that because the Examiner and the Board did not object to the omission from his later claim of other regions of the design disclosed in the 709 application, Owens should also be permitted to omit a portion of the front and back panels without objection. Br. at 29-30. But disclaiming clearly visible portions of the original design is quite different from disclaiming an arbitrary portion of the front panel that was not separately identifiable in the original disclosure, resulting 27

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 35 Filed: 08/24/2012 in a claim with a new design feature a trapezoidal section not previously disclosed. 3. Owens s Argument Regarding Lukach Does Not Show Reversible Error Owens argues that the Board improperly relied on Lukach in finding that the claim on appeal is not entitled to the benefit of the filing date of the 709 application. Br. at 32-40. Owens s argument regarding Lukach does not show reversible error by the Board. The Board cited Lukach only to address an argument that Owens now renounces. Before the Board, Owens contended that the only difference between the claim on appeal and what was disclosed in the 709 application was that Owens had broadened the scope of the claimed design by adding an unclaimed horizontal boundary line. A9 (citing A194). Owens further contended before the Board that as a general proposition, one must conclude that broadening a design patent claim in a child application by disclaiming areas that were claimed in a parent application does not affect priority under 120. A9 (quoting A195). In rejecting Owens s argument, the Board cited Lukach for the general proposition that a broad claim (e.g., a claim to a range) is not necessarily supported by a narrower disclosure showing an example within the scope of the claim. A10 (citing Lukach, 442 F.2d at 969). While the Director recognizes that the concept of broad versus 28

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 36 Filed: 08/24/2012 narrow claims may not be particularly applicable in the design patent context, the Board simply cited Lukach as a rebuttal to Owens s overly broad argument. See A10 n.3. Regardless, the issue is no longer relevant because Owens now disavows his earlier position that the claim on appeal is broader than the subject matter disclosed or claimed in the 709 application. Br. at 35 n.44. Because the Board cited Lukach only to rebut one of Owens s arguments, an argument that Owens has now abandoned, it is clear that the Board s decision did not depend on its discussion of Lukach. The Board considered Owens s other arguments and responded to them without reference to Lukach. A11-13. Thus, the remainder of the Board s decision stands on its own and provides more than substantial evidence in support of the finding that the claim on appeal is not adequately described in the 709 application. Id. 6 4. The Rejection Under 103(a) Is Not Inconsistent with the Board s Finding That the Claimed Design Is Not Sufficiently Disclosed in the 709 Application Finally, Owens argues that the rejection of the claim on appeal under 103(a) is inconsistent with finding that the claimed design is not disclosed in the 709 application in a manner that satisfies the written description requirement of 6 Even if Lukach does not directly support the Board s findings, the Board s discussion of the case did not affect its decision and was at most harmless error. See Watts, 354 F.3d at 1369. 29

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 37 Filed: 08/24/2012 112, 1. Br. at 40-48. Owens s position is not supported by the record and is contrary to well-established case law. First, Owens admits that if the claim on appeal is not entitled to the benefit of the filing date of the 709 application, the claim is anticipated or rendered obvious by the bottle that was on sale more than one year before the filing date of the 172 application. Br. at 44. Thus, Owens can only challenge the finding that the claimed design is not adequately described in the 709 application to meet the written description requirement, not the merits of the 103(a) rejection. Next, as the Board correctly found, there is no conflict between the Examiner s finding that the claimed design was not described in the 709 application and the obviousness conclusion. A13. As Owens admits, a design that results from dividing up the front panel of the bottle would have been obvious in view of the fully disclosed bottle. Br. at 43; A181; A216. But 112, 1 requires more a showing that the inventor actually had possession of the claimed partial bottle design as of the filing date. A13; A223. Simply because Owens s new design may have been obvious to an ordinary artisan does not establish that Owens had possession of that design. Owens has failed to provide any persuasive evidence or argument in response to the Examiner s finding that the drawings of the 709 application provide no indication that the inventors had possession of a bottle design divided to create a new design with a trapezoidal section on the front 30

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 38 Filed: 08/24/2012 panel. Accordingly, substantial evidence supports the Board s finding that the 709 disclosure does not provide adequate written description support for the claimed design. A13. Lastly, Owens urges the elimination of a double standard between the requirements for 112, 1, and 102 and 103 for design patents. Br. at 45. Owens appears to acknowledge the existence of case law holding that a description that merely renders an invention obvious does not necessarily satisfy the written description requirement. See, e.g., Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). He also acknowledges that in some situations a disclosure may anticipate a claim yet still not adequately describe the claimed subject matter for purposes of 112, 1. See Lukach, 442 F.2d at 970 ( [T]he description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure. (internal citation omitted)). Although Owens argues that the rule of law established by these cases should apply only to utility patents, this Court has previously held that it also applies in the design patent context. See In re Salmon, 705 F.2d 1579, 1582 (Fed. Cir. 1983). The Court, therefore, should reject Owens s plea to establish a different rule for design patents. 31

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 39 Filed: 08/24/2012 VI. CONCLUSION Because the Board s decision is supported by substantial evidence, and is in accordance with the law, this Court should affirm. Respectfully submitted, August 24, 2012 /s/ LYNNE E. PETTIGREW RAYMOND T. CHEN Solicitor LYNNE E. PETTIGREW WILLIAM LAMARCA Associate Solicitors Office of the Solicitor Mail Stop 8 U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 272-9035 Attorneys for the Director of the United States Patent and Trademark Office 32

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 40 Filed: 08/24/2012 RULE 32(a)(7)(C) CERTIFICATE OF COMPLIANCE I certify pursuant to Fed. R. App. Proc. 32(a)(7) that the foregoing BRIEF FOR APPELLEE- DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE complies with the type-volume limitation required by the Court s rule. The total number of words in the foregoing brief, excluding table of contents and table of authorities, is 6,929 words as calculated using the Word software program. /s/ LYNNE E. PETTIGREW Associate Solicitor

Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 41 Filed: 08/24/2012 CERTIFICATE OF SERVICE I hereby certify that on August 24, 2012, I electronically filed the foregoing BRIEF FOR APPELLEE DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, using the Court s CM/ECF filing system. Counsel for the Appellant was electronically served via e-mail per Fed. R. App. P. 25 and Fed. Cir. R. 25(a) and 25(b). /s/ LYNNE E. PETTIGREW Associate Solicitor