Unclaimed Boundary Lines In A Continuation Design Patent Application May Add New Matter Where The Boundary Was Not Suggested In The Disclosure Of The Parent Application

In In re Owens, No. 12-1261 (Fed. Cir. Mar. 26, 2013), the Federal Circuit held that a broken line in a continuation design patent application, which served only to partition one part of the claimed design along a boundary not suggested in the parent application, created new matter not supported by the parent application.

In 2004, applicant Timothy S. Owens filed U.S. Design Patent Application No. 29/219,709 (“the '709 application”), claiming the overall design of a bottle related to a line of mouthwashes and rinses. Two years later, Owens filed U.S. Design Patent Application No. 29/253,172 (“the '172 application”), a continuation application claiming benefit of the '709 application under 35 U.S.C. § 120. In the '172 application, Owens claimed specific design elements on the top and side portions of the original bottle. One such feature was a portion of the pentagonal front face of the bottle directly below the bottle's neck. To indicate what portion of the front panel was claimed, Owens added a broken line bisecting the pentagonal front panel. As a result, the application depicted a trapezoidal area of the front panel just below the bottle's neck, the broken line comprising the base of the trapezoid:

It was undisputed that the parent application disclosed no boundary (explicitly or implicitly) that corresponded to this newly added broken line.

On the basis of the added broken line, the examiner rejected Owens's continuation application as containing new matter, namely, the trapezoidal-shaped region created by the boundary line. Since the examiner found no evidence in the parent application that Owens originally possessed such a trapezoidal region, the examiner rejected the continuation application for lack of written description and as obvious, under 35 U.S.C. § 103, in view of bottles sold between the filing of the parent and continuation applications. The Board affirmed, agreeing that Owens's continuation application claimed previously undisclosed “trapezoidal sections occupying part, but not all, of the surface area of the front and back panels.” Slip op. at 6 (citation omitted).

“It does not follow . . . that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.” Slip op. at 9.

On appeal, the Federal Circuit first characterized the type of broken line at issue. The Federal Circuit clarified that broken lines contained in initial...