By Dennis Crouch
In re Owens (Fed. Cir. 2013) (decision pending)
In 2006, P&G obtained a design patent for its Crest brand mouthwash bottle. D531,515. Before that patent issued, the company filed a continuation application and eventually amended the drawings to use ghost-lines (dashed lines) for most of the bottle design and solid design lines for only a small portion of the bottle surface.
In the figures below, the drawing on the left is the design drawing originally filed in the specification and issued in the D'515 patent. The drawing on the right is found in the continuation and the subject of this appeal. In design patents, the drawings are of critical importance because the single allowable design patent claim typically ties the scope of enforceable right to the drawings. Here, for instance, in the D'515 design patent P&G claims "the ornamental design for a bottle, as shown and described."
Now, for claim purposes, ghosted lines have essentially no meaning and are given no weight. Thus, the continuation below claims a portion of the bottle base. The focus of the litigation is on the front portion of the bottle that previously claimed an inverted irregular pentagon and now appears to be limited to only the upper portion of that pentagon in a roughly trapezoidal shape. The base of the trapezoid is ghosted, but the drawing does claim the surface up to the ghosted line. In the photo of the Crest bottle to the right, you can see the inverted pentagon design is created by a label sticker.
During prosecution, the PTO rejected P&G's continuation application — concluding that the new claim (as shown in the drawing) did not satisfy the written description requirement of 35 U.S.C. § 112(a). In other words, it is not apparent from the originally filed specification that that the inventor was at that time in possession of the invention as now claimed. P&G's argument is that the area being claimed was already disclosed in the original application and that is literally true. The PTO responds, however, that the original application did disclose a break-point for the trapezoidal area now being claimed. In other words, nothing in the original application indicates that the portion now claimed could itself be a design. The PTO has proposed a rule it feels is administrable: applicants can amend claims by "ghosting" solid lines and vice-versa, but applicants cannot further partition areas or define new portions without running afoul of the written description requirement.
Design patents are largely governed by the same rules as utility patents. This is often unfortunate because the policy goals supporting many of the (utility) patent rules do not map well to the world of design rights. Designs are, for the most part, being used as an additional layer of trademark (trade dress) protection rather than as an incentive to invest in the invention of new designs. This case fits that mold well. But, it is the patent laws that we follow.
In thinking about the written description requirement, a good beginning approach is to try to first uncover the best analogy to utility patent doctrine. One analogy might be to subgenus & subrange claims. Utility patents regularly disclose and claim concentration level ranges, such as "concentration of cardiolipin is between 0.02 and 0.04%." When impinging prior art is discovered, one solution is to amend the claim scope to narrow the claims – perhaps to change the concentration to "between 0.02 and 0.03%." However, the written description requirements limits an applicant's ability to make this narrowing amendment unless there is some evidence that the applicant had (at the time of the application filing date) possession of the invention with the narrower range as well. For these points, the M.P.E.P. cites In re Smith, 458 F.2d 1389 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads) and In re Lukach, 442 F.2d 967 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range). Of course, the amendment by P&G in the present case is not a narrowing amendment but rather might better be seen as a broadening amendment – of course, broader and narrower in design patent law is somewhat difficult to define. The written description requirement is also used to invalidate claims that have been broadened by eliminating claim limitations. Such cases include ICU Medical v. Alaris Medical System (Fed. Cir. 2009) and the often maligned Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means). See also MPEP § 2172.01.
All-in-all, the PTO's position makes sense to me – that nothing in the new original application suggests the claim limit as suggested by P&G. Design patent claims are considered "as a whole" and refocusing only on a small portion of a design can dramatically alter the impact and overall feel of the design. In the ordinary doctrine of patent law, such a potentially dramatic change in claim scope is only allowed if the original disclosure evidences that the inventor possessed the refocused invention at the time of filing. It is reasonable here to say that Owens did not possess that new invention as now claimed. Here, we should be keen to recognize that the written description requirement is separate and distinct from the enablement requirement – even though both arise from the same statutory phrase in Section 112. Here, there is no question that the enablement requirement is met.
The kicker for the PTO in this case is that written description is a question of fact and PTO determinations on questions of fact are given substantial deference on review by the PTO. There is hardly any question in my mind that the PTO's position passes that low threshold.
The case was recently argued before Judges Prost, Moore, and Wallach. This panel is interesting because of Judge Moore's famous pre-nomination article on the problems of patent continuations. This case arises out of a continuation. P&G wants to claim priority back to the original filing date because the original patent had already been out for more than a year by the time that the amended claims were introduced in the continuation. Thus, if it cannot claim priority then its original work will serve as prior art to block this later patent from issuing. A decision is expected later this spring.
In the trade dress world, this mess would not make such a difference because we don't worry about prior art but rather priority in the marketplace. But again, in the US, design patent rights are squarely within the pigeon hole of patent law.
Or do you mean anyone else?
You have not even acknowledged that I have already addressed your point above.
Come on you guys, surely somebody has some thoughts. Don’t let the orals in Alice override your interest in and confusion about design patents!
MM! Gandy! Carani? Bueller? Anyone?
And if anyone sees my Conscience, tell him that I achieved the self-defeat of MF providing a ‘page-cite’ to Prometheus wherein my view of the dead letter comment was proven correct and MF’s view was (no real surprise) incorrect – and it is archived here for all to see).
Hmmm, maybe my Conscience is out there now trying to prod MF into a display of acknowledging intellectual honesty by admitting that he is a part of the legal acaemia.
IBP,
I have already touched upon this – see my series of posts to Jim Gandy starting on Jan 18 at 6:26 PM. If you have some real engineering background that includes drafting, you would recognize that a surface (if claimed) is defined a its edge by lines. Change the lines and you change the surface.
It’s right before the attempted Trainwreck by the esteemed legal academian and his from under the rock Jihad.
I have now read all the briefing and listened to the orals.
WITHOUT GETTING TOO SPECIFIC, I have these observations to offer:
There is at least 1 judge on the panel who has a shocking lack of understanding of design patent drawing conventions.
The appeal will likely fail, as the court seemed to already have a specific idea in its mind at the outset of the hearing, which idea had only one difficulty: a seemingly irreconcilable, already-granted design patent. The PTO solicitor easily removed this difficulty by saying that the irreconcilable patent was granted in violation of PTO rules, and that the granting of a patent was not “binding” on the PTO in analogous disputes such as the one at bar.
This comment might require more understanding of the case than many of you guys have, but the dispute between the PTO and the appellant is framed differently by the two parties. The appellant claims that “the boundary” in question was not claimed in the child, and therefore did not need to be described in the parent–therefore, the issue according to the appellant is whether or not the boundary was disclosed.
However, the PTO frames the issue NOT as to whether the BOUNDARY was disclosed, but as to whether the LOCATION OF THE BOUNDARY was disclosed. Listening to orals, it seems as though this is the construction preferred by at at least the most vocal of the justices.
It seems to me that in terms of how the appellant thinks, the resolution of the dispute would turn on WHETHER THE LOCATION OF THE BOUNDARY WAS CLAIMED IN THE CHILD, AND THUS WHETHER IT WAS ADEQUATELY DESCRIBED IN THE PARENT.
I have thoughts on this, which I won’t yet post, but I’d like to throw this question out to readers: are the LOCATIONS of so-called “environmental lines” and “boundaries”, if not the environmental lines and boundaries themselves, properly considered as claimed in a design app?
Or are they more properly considered as written description, analogous to the spec in a utility app?
So-called “environmental lines” show how and where the design is applied to a particular article, or how the configuration of part of an article is integrated into the configuration of the remainder of the article, or how how the particular article relates to another particular article.
So-called “boundary lines” are generally considered to describe the metes and bounds of claimed subject-matter, even though they themselves are generally considered as not claimed.
I look forward to hearing your answers to that question, or whether you have a different formulation of the essential question that the court considers to have been put before it.
“he’s counsel for the appellant”
LOL, then maybe you shouldn’t bill him – after all, we don’t want you to violate the no-third party posting rule, do we?
Well, it looks like we won’t be hearing from Saidman any time soon–he’s counsel for the appellant.
I’ve just had the delight of reading through all the filings. Oh, boy! I’m like a kid in a candy store.
I wish Saidman would return, minus the bravado.
He might actually know a thing or two about design patents.
If he does, then he appreciates the enormity of the task of putting this thread onto a sound footing, as far as design patents are concerned.
But given Gandy’s input, there is much more to this thread than simply a discussion of design patents–in fact, I would say that design patent issues are only secondary to vastly more important issues raised in this discussion.
“Is there someone I can bill?”
…Perry Saidman?
Honestly, there is so much to write on this topic that I don’t know that I have the time.
I don’t profess to know everything there is to know about design patents, although I have done more than a few of them– but I have given them consideration, both alone and in the context of utility patents, and patents in general.
And all I can say at this point is, wow–just, wow. I have the feeling that only a handful of people understand anything about design patents in the USA, and that that handful is restricted to a few practitioners. Everybody else is clueless, and with good reason.
Mooney has done a good job of trying to think things through, I must give him credit for that. Gandy’s comments leave me with mixed feelings of disappointment and rage.
How best to proceed? I do think this could be a valuable thread, and that this case is perhaps the best vehicle yet for design patent discussion on this forum. But it’s daunting, I feel like I’m going to have to do all the heavy lifting. Is there someone I can bill?
LOL – as opposed to those that actually want to post without the poor-quality tricks of mischaracterizations, strawmen, non-sequiturs, and undeserved insults (like your little circle)…?
Cats would have it so lucky.
(and perhaps you should spend more time unedrstanding the law and case facts instead of cruising youtube for “charming” snippets)
One of the interesting “policy” aspects is the apparent abdication of a legal basis with a switchover to a present-day-fact basis.
There be a slight constitutional problem there…
I will take that as a “No, I did not read it, but I am going to make my usual (troll) comments anyway”
Better trolling please.
Thanks for the link anon, but I’m not sufficiently interested in those issues to actually read the paper, for those issues sound in policy rather than in law, and I have my own ideas about patent policy.
have you bothered to read Prof. Crouch’s paper,
I did read it. I think some of it poses an existential threat to the fabric of the universe and I wouldn’t be surprised if Dennis is abducted by the same space aliens who are presently assaulting our proud country with their insidious mind weapons.
“You didn’t provide any insight so you won’t be missed. Not by me anyway.”
LOL – it’s amazing how what MM says applies to him more than anyone else (especially the derogatory parts).
“My contempt is not for [] patents but for practitioners who think they live in a magical bubble immune from scrutiny or criticism.”
You really should work on that self-loathing of yours MM. Having such contempt for yourself is just not healthy.
– Jim, you nailed it
link to youtube.com
Maybe you two should stick to harassing cats. LOL.
Nice vacuous post MM – have you bothered to read Prof. Crouch’s paper, or are you (yet again) making comments only after sniffing the air and seeing that the post begins with “anon said” ?
You originally described your design for a bottle as one that had a series of solid lines on the surface of the bottle in the form of lattice or a grid. That description is a single unitary surface pattern on a bottle nothing more.
Wrong. I included with my drawing an express statement that each and every subcombination of lines was disclosed as a separate surface pattern and considered to be a design of my invention.
If you amend that surface pattern by converting some of those solid lines to broken lines and disclaim them you’ve changed the surface pattern, it’s a new and differnt surface pattern from what you orignally disclosed.
No, it’s not. It’s one of the originally disclosed surface patterns because I expressly included all subcombinations of the lines. I’ve gone even further than the applicant in this case with my original disclosure because the applicant in this case did not expressly refer to sub-combinations yet the applicant wishes to claim sub-combinations now.
the applicant in this article did not change the shape of the front surface of the bottle, but merely disclaimed a portion of it.
It’s becoming difficult to take you seriously, Jim, in spite of all your awesome credentials. We’re talking about a patent claim that describes a surface. If the claim is changed, the surface described by the claim is also changed.
that’s … a change in scope.
Right. Hence the rejection. The applicant is broadening his claim without adequate support for the broadened claim. In constrast, in my hypothetical I included express support for each and every sub-combination and yet you wish to deny me the ability to “disclaim” lines from my original drawing. And you haven’t provided any coherent explanation for why my “disclaimer” (which I expressly support in my original disclosure) is not permitted but the disclaimer in the instant case is permitted.
It’s clear from your comments you have nothing but contempt for design patents
My contempt is not for design patents but for practitioners who think they live in a magical bubble immune from scrutiny or criticism.
Design patent law is going to experience some big changes, Jim. You can sit and cry about it and recite your credentials all you want. But you need to get used to the idea that there are many of us out here who know as much about design patent law as you do. And to the extent we are able to predict where the law is going and why while you sit there and cry about it, it’ll become soon become clear that you know a lot less about design patent law than you thought.
this is the last time I’ll respond back to you,
You didn’t provide any insight so you won’t be missed. Not by me anyway.
dangerous conflation
Oh my! watch out kids!
If Dennis keeps it up maybe the patent txxbxgges will start protesting in front of his house.
IBP,
Pro. Crouch has published an entire paper explaining what he means – see link to ssrn.com (at least that’s what the front page of my copy says).
It’s mostly wishful thinking and (to me) dangerous conflation of various IP theories, but it is an interesting read.
Well, it is difficult to know where to begin.
I will break this into 2 posts, this first one generally addressing Dennis’ post, the second some of the general ideas that I believe are applicable.
Regarding Dennis’ post:
“This is often unfortunate because the policy goals supporting many of the (utility) patent rules do not map well to the world of design rights.”
Really? Do you have any explanation of, or evidence for, such a conclusion?
“Designs are, for the most part, being used as an additional layer of trademark (trade dress) protection rather than as an incentive to invest in the invention of new designs.”
I am unable to make logical sense of this sentence, which in effect condenses to “Designs are not being used as an incentive to invest in the invention of new designs.” Can you explain what you mean?
“In fact it’s clear you know very little about it.”
LOL – Jim, you nailed it.
Thing is, this is how MM is on any topic he posts about. His self-delusion knows no bounds (except for his burnt fingers from attempts at actually discussing substantive law).
I have no problem if you want to disagree with my conclusion of what possession is in the contect of written description requirement, but don’t continue to say that your use of possession is in the context of written description requirement and my isn’t unless you can articulate further why you believe that. You seem to have that one talking point and can’t expand on it.
You originally described your design for a bottle as one that had a series of solid lines on the surface of the bottle in the form of lattice or a grid. That description is a single unitary surface pattern on a bottle nothing more. That description doesn’t identify any subcombinations as you think it does, it only describes a specific surface pattern. If you amend that surface pattern by converting some of those solid lines to broken lines and disclaim them you’ve changed the surface pattern, it’s a new and differnt surface pattern from what you orignally disclosed. Your not changing the scope of the surface pattern your changing the appearance of the surface pattern by eliminating certain lines. You may not want to believe it, but that’s what you’ve done. Why do I get to say that? Because I have years of examination experience in applying the law. What examination experience do you have?
Despite what you think, the applicant in this article did not change the shape of the front surface of the bottle, but merely disclaimed a portion of it. You say it yourself “(T)he two full lines that form a V with the point at the bottom of the bottle are not part of the claimed design in the continuation.” That’s right there not, but that’s not a change in shape but rather a change in scope. The shape and appearance of the bottle in the continuation application is exactly the same as that shown in the parent application. the only difference is that some of the solid lines have been converted to broken lines and those surfaces defined by those lines have been disclaimed. That’s a change in scope not a change in configuration.
I reference just the front surface of the bottle because that is the only part of the bottle that the PTO is contending introduces new matter and is the basis of the rejection.
It’s clear from your comments you have nothing but contempt for design patents and that’s ok your entitled to your opinion, but don’t act like you know everything there is to know about design patent practice and law. You don’t. In fact it’s clear you know very little about it.
You can respond back to my comments but this is the last time I’ll respond back to you, my time is to valuable to be wasting any more of it on someone as obtuse as you.
LOL – that’s rich, coming from the king of not answering questions.
(Especially as I had already directed Jim to the blog instead of posting again). In your hurry to be snarky you kind of missed that.
Better trolling please.
As to your hypothetical, could you repeat it
anon will get right on that, Jim, as soon as he’s finished [not] telling us how he thinks this case is going to be decided.
Jim if you knew anything about design patent examination practice you’d know that if you submitted an application with ten bottles having differnt shapes as you’ve described the first action you’d get is a restriction requirement. Since each bottle would have a different shape their appearances would be considered patentable distinct, and since you can only show one patentably distinct design in an application, restriction would be required. One claim, one patentably distinct design. That’s the law.
Gee, thanks, Jim. Except I knew that. This isn’t relevant to the issue we’re discussing. You can restrict my design a trillion ways if you like. All the designs are still disclosed (and will be prior art) against competitors. I’ll carefully file my divs based on any designs that infringe.
explain to me how your supposedly using the term “possession” in its “legal sense” while I’m using it in its “literal sense”.
Well, you seem to think that your conclusion is self-evident based on a dictionary definition of possession. I disagree with your conclusion because we’re talking about “possession” in the context of the written description requirement, not about “possession” in the context of, say, a bag of marbles.
After you filed this application for a bottle having a specific surface pattern of solid lines forming a lattice or grid and you amended the drawings by converting some of these solid lines to broken lines and disclaimed them as not forming part of the claimed design, you will have added new matter since you changed the surface pattern.
No, I didn’t. All possible surface patterns and sub-combinations therof are my inventions. That’s expressly part of my disclosure. There is a change to the drawing originally filed (just as there was in the present case) but there is no change to any of the surface patterns I disclosed. I was in possession of all them. How could I not be, Jim? Why do you get to say what sub-combinations I possessed and which ones I didn’t?
That’s not what the applicant did to the bottle in the present article. The applicant … amended the scope of the claimed design to just a portion of the front surface of the bottle
That’s exactly what I’m doing. I claimed all designs defined by any sub-combination of lines across the front surface of the bottle. Now I’m deleting some of them. What’s the problem?
The applicant didn’t change the shape of the front surface of the bottle
Yes he did. The two full lines that form a V with the point at the bottom of the bottle are not part of the design claimed in the continuation. And where do you come up with this “front surface of the bottle test” anyway? The original drawing described a particular bottle outline, with surface facets. The design in the continuation would cover bottles that, to any observer, would not resemble the bottle shown in full lines in the original application.
I believe what confuses most people about this case is the addition of the horizontal broken line defining the boundary between the claimed and unclaimed portions of the front surface of the bottle.
What’s confusing is why anyone invested in design patent law would wish to make it an even bigger joke than it is already by asserting that this cr-ppy prosecution history is the norm.
Jim,
If you are answering by email, then I suggest you visit the website to see my comments – they had to be posted in sections because something was tripping the filter.
As to you being a big boy about MM. Gotcha. But it’s still worthwhile to needle MM about his “style.”
As to your reply at 5:12 PM, your focusing on “surfaces” is appropriate to my comments.
I look forward to your reply.
Throwing crrp at a wall and seeing what sticks is not shrewd.
Ok professor, I’ll call you that since you know so much about design patent practice and law yet don’t have the courage to identify yourself. I’ll humor you. But first, explain to me how your supposedly using the term “possession” in its “legal sense” while I’m using it in its “literal sense”.
As to your example, if you knew anything about design patent examination practice you’d know that if you submitted an application with ten bottles having differnt shapes as you’ve described the first action you’d get is a restriction requirement. Since each bottle would have a different shape their appearances would be considered patentable distinct, and since you can only show one patentably distinct design in an application, restriction would be required. One claim, one patentably distinct design. That’s the law.
If you added a series of solid lines forming a lattice or grid on the surface of the bottle as you described it would be considered a surface pattern and nothing more. After you filed this application for a bottle having a specific surface pattern of solid lines forming a lattice or grid and you amended the drawings by converting some of these solid lines to broken lines and disclaimed them as not forming part of the claimed design, you will have added new matter since you changed the surface pattern. You weren’t in possession of the amended surface pattern at the time the application was filed.
That’s not what the applicant did to the bottle in the present article. The applicant didn’t change the shape of the front surface of the bottle but rather amended the scope of the claimed design to just a portion of the front surface of the bottle, which surface is clearly depicted in the original drawings.
I believe what confusses most people about this case is the addition of the horizontal broken line defining the boundary between the claimed and unclaimed portions of the front surface of the bottle. The addition of this broken line is not new matter since it is merely a drafting technique to define the boundary between claimed and unclaimed portions of the front surface. I submit that if applicant had not added this broken line to the amended drawing, but merely stopped the verticle shade lines on the front surface at the same point along an imaginary horizontal line corresponding to the added broken line, the PTO would have been hard pressed to make a case for new matter being added to the amended drawing.
link to bailii.org
While we’re about it, here is a Link to the embarrassing story of Apple’s attempt to bury on its website the public announcement of its defeat by Samsung, which the English court required it to disseminate.
Next I’ll see if I can find a Link to the reprimand the London court gave to the German court that thought it could ignore the outcome of the litigation in London. Fun case, this one.
link to bailii.org
link to bailii.org
There you go Ned. First and second instance in England. As you see, the court came to the pragmatic, common sense answer.
Of course, pan-European Design Registrations have no claims in words. So, when the English court orders us to construe utility patent claims through the eyes of the PHOSITA, on the basis of “What was the writer of the claim using the language of the claim to mean?” it is only a small further step for the court to construing the dashed lines of the Apple Des Reg drawing as the outline of the sub-surface screen periphery.
As MM shrewdly observes, design patent litigation is in its infancy.
anon, thanks for the info about MM. I’m a big
boy and can take care of myself. As to your hypothetical, could you repeat it and I’ll try to give you an answer if possible. However, I will tell you that I try to avoid giving answers to hypothetical examples because there’s not always a clear cut answer.
I think this issue was addressed in the UK appeal. What was the answer?
Looks like I hit a nerve there.
The answer to “how do you know?” Is understand the field.
Clearly, you have no such understanding.
Simple remedy: take a local college drafting course.
You may then realize that your lashing out with invective is not only counterproductive, but that the only one impugned is you (regardless of how enamored Ned is of your “style”).
Nice try, anon.
You wrote: There is no doubt … that certain amendments making some solid lines into broken lines introduces no new matter.
I wrote: Let’s assume you are correct. How do we identify those special solid lines and distinguish them from the solid lines that can’t be changed into broken lines?
Now read your response. Then GFY, you hypocritical p—ck.
Nice vacuous post MM.
Tell me, did you ever take a drafting course? Do you understand (at some none-minimal level) how drafting works?
You don’t even know enough to understand what you want to pontificate about (not that that ever stops you). You are like a blind man giving lectures on the subtle hues of a sunset you have never seen. You are like a two-dimensional being trapped in a circle, not able to comprehend what you do not see (dismissing criticism of you by calling the entire type of patent “in its infancy” is itself an infantile remark and only (once again) indicative of you accusing others (here other things) of that which you are.
It would be one thing if you acted like this as a satirical rhetorical tool, but you actually believe your own B$.
anon: There is no doubt … that certain amendments making some solid lines into broken lines introduces no new matter.
Let’s assume you are correct. How do we identify those special solid lines and distinguish them from the solid lines that can’t be changed into broken lines?
I don’t create a ridiculous strawman
There’s nothing “ridiculous” about the hypothetical. I’ve already explained to you that similar approaches are routinely taken by applications for utility applicatios where examination and written description is traditionally applied more rigorously. And it’s certainly not a “strawman”. It simply puts the issues (and the practice of filing full line designs and subsequently dropping full lines where it’s convenient to do so) in a stark light.
minimal understanding.
How do you think this case is going to be decided, anon?
“That’s nice. Apparently the views of “people like me” are taken very seriously at the PTO. ”
You are way too full of yourself. There is no doubt that certain self contained features in original applications are clearly in the possession of the applicant at the time of filing and that certain amendments making some solid lines into broken lines introduces no new matter.
Take note of how I pose the question and the fact that I don’t create a ridiculous strawman in my question to Mr. Gandy. Clearly you have zero design engineering experience. I suggest that you do not take the “high and mighty” route when you post in such minimal understanding.
Jim by the way, you still haven’t given a reasonable, rationale explanation to my question.
Actually my answer was exactly as reasonable and rational as your question. You seem to want to use the term “possession” in some sort of literal sense. I am using the term in its legal sense, with an understanding of the purpose of US patent law’s written description requirement. Given that we are talking about US patents, which use is more “logical”, Jim?
I get that “a picture is worth a thousand words.” What I’m trying to explain to you, Jim, is that according to your own theory of design patent “law” (a subject in its infancy and experiencing some severe growing pains) my design patent disclosing a bottle shape with, say, ten thousand grid lines criss-crossing its surface is enough to show possession of each and every possible subcombination of those lines, such that (according to you) I not only prevent others from patenting similar (obvious) sub-combinations but I can patent each of them myself (of course, I would just claim the sub-combinations that read on allegedly new designs appearing after I filed my case).
Do you disagree that this is the “logical” outcome of the position that you’ve taken, Jim? If not, please explain why.
I encountered people like you throughout my career at the PTO
That’s nice. Apparently the views of “people like me” are taken very seriously at the PTO. Hence the applicant being forced to take an appeal to the Federal Circuit.
I think I know a little something about the practice and the law.
It doesn’t matter what you think about yourself, Jim. Try proving what you know by typing a comment that is responsive to the issue(s) I raised rather than simply throwing your credentials around and dismissing those who disagree with you. Seriously. Give it a whirl.
Jim,
You are new here and do not yet recognize the futility of attempting to get an actual answer from MM. Any time he attempts a substantive reply, he gloriously self-defeats. Because of that, he usually sticks to asking questions and only giving insults and vacuous fluff.
Did my hypothetical to you make sense?
I encountered people like you throughout my career at the PTO, so entrenched in utility patent principles that if somethings not described in written words then you can’t be in possession of it. Have you ever heard the saying “a pictures worth a thousand words?” If that’s true, and I had a thousand words to describe the surfaces of the bottle shown in this article I could not only describe all of the surfaces in their entirety, but all of the segments and portions of those surfaces. Such is the power of a drawing. Even the CAFC recognizes that to try and describe a claimed design is neither necessary nor helpful, since the drawing is its own best description.
I spent over 32 years at the PTO as a design patent examiner, supervisor and the first practice specialist for the Design Patent Technology Center, I think I know a little something about the practice and the law.
Oh, by the way, you still haven’t given a reasonable, rationale explanation to my question.
How to construe dashed lines in design patent drawings? The Apple v Samsung case raises an interesting issue.
Apple’s drawing includes a cluster of parallel lines consistent with “hatching” to suggest a flat glass front face extending all the way to the rectangular periphery of the depicted object. Running through the cluster is a dashed line that continues, to form a rectangle that encloses an area slightly smaller than the full front face.
So what the draftsperson intended, and what any willing-to-understand normal observer sees in the drawing, is a flat featureless glass front face with a screen underneath (the reason why the line is a dashed one) the screen stopping short of the edge of the device.
But take an experienced design patent Examiner or lawyer who must follow the law on how to construe the dashed line? For that person, is the screen i) to be disregarded or ii) is it optional? Any thoughts?
Jim Gandy:
I ask, how can you be in possession of an entire surface but not in possession of a portion of that surface? It’s illogical.
There’s nothing illogical about it once you appreciate that “possession” is a legal term whose purpose is to give the written description requirement some teeth.
To the extent that “people have been doing this for years” with design patents, as you suggest upthread, I’m here to tell you that the age of design patents as a playground lacking adult supervision are coming to an end. Start preparing yourself.
As I noted in my Jan 18 12:33 post, the “law” you wish to have applied here (really, the lack of any meaningful written description requirement) leads to outcomes that are likely not desirable. Specifically, I (or any other clever person) can file a design patent application that contains, say, ten common shapes for a product container (pear shaped bottles, cylindrical bottles, square bottles, etc) and lay on top of each shape one or more extremely fine lattices or grids using full lines. In this way, using your preferred rule, I have shown “possession” of every possible facet combination that can be placed on the surface of the article. All I need to do to stop an infringer is revisit my application and change most of the full lines to dotted lines and voila! You infringe. That other competitor with a completely different set of facets? Hold on a minute …. just need to change some of those lines to dotted lines in my application. Well, what do you know: I was in “possession” of that design, too. Maybe throw in some language about how the design includes all sub-combinations where any vertices are “smoothed” out, and an example of how that works.
So there, with one application I’ve disclosed thirty trillion (minimum number) different designs. Even better, I have succeeded not only in poisoning the well for my competitors who should want to file their own design faceted bottle patents but I can also sue them for any faceted bottle design they come up with.
I acknowledge that the well-poisoning strategy has a tried-and-true equivalent in utility patents. Particularly in the context of chemicals (including nucleic acids) where the manufacture of species within a genus is well-known, it’s easy to describe and meet the 112 requirements for hundreds, thousands, or millions of such species and prevent the compositions from being claimed in the future. But generally speaking, without a demonstrated utility and/or a non-obvious property, it can be difficult to actually patent all those species.* But utility, we know, is irrelevant to design patents.
*But the PTO of course does manage to screw this up occasionally; also, there is the travesty of Genetics Institute v. Novartis (Fed. Cir. 2011), one of the very worst decisions in recent years (at least as bad as the CAFC’s original decision(s) in Prometheus) which will no doubt be overturned and hopefully sooner rather than later.
link to patentlyo.com
“However, this does not prevent an applicant from filing a divisional application on a portion of the article and obtaining the original filing date. Applicants have being doing this for years in design patent practice”
Jim,
I am confused by your posts, as below you indicate that certain things would be in fact new matter and not allowed, and yet, here, you seem to indicate that doing this “new matter” change in a divisional might be OK.
Can you reply to the walk-through example I posted below? Are you in agreement with how I distinguish the possibility of merely changing certain lines to broken lines violates the no new matter rule? How the fact that certain lines impinge on the surfaces that you might have possession of, but that changing those particular lines may void the surface possessed?
Note, that I am not saying that entire features could NOT be properly claimed in divisionals, just that there is no carte blanche to be able to arbitrarily make changes and still say that the original applicant was in possession of the new designs.
anon, I think you may have mis-read my original comment. I said that new matter can either be an addition to or a departure from the original disclosure, and that a departure from can involve a change in shape or configuration. Such a change would definitely be considered new matter.
Ned, since rule 153 precludes an applicant from having more than one claim in a design patent application there is no proper way to include an additional claim or claims to portions of an article in a single application. However, this does not prevent an applicant from filing a divisional application on a portion of the article and obtaining the original filing date. Applicants have being doing this for years in design patent practice. As an example, I issued the design patent on the original Chrysler mini-van. Prior to that design patent issuing, Chrysler filed divisional applications on the door panels, the rear quarter panel and the rear hatch panel. There were no claims or any indication that these were separate designs from the entire mini-van when the original application was filed, but that did not preclude them from filing divisional aplications on those individual panels and obtaining the original filing date. Applicant was clearly in possession of these individual body panels at the time the original application was filed even though there were no specific claims to them. Again I ask, how can you be in possession of an entire surface but not in possession of a portion of that surface? It’s illogical.
How about mapping notions of open (comprising) and closed (consists of) claim language to the world of US design patents? Does this case have anything to say about that?
Consider for example tablet designs registered by Apple. Suppose somebody comes on the market with a rival product that has similat L x W x Depth overall dimensions but is cluttered with ornamentation and small interruptions to the main outline slab shape depicted in the Apple design drawings.
With utility patents, adding extra features to an infringing embodiment won’t help you. But will it help Samsung, when Apple relies on the absence of clutter and ornamentation for the distinctiveness of its design. The Samsung product design is manifestly more cluttered than the design depicted in the drawings in Apple’s design registrations, thereby missing out on the cool overall impression that endows Apple’s design with whatever validity it might have.
Isn’t it true that, similar to utility patents, the claim must be taken as a whole?
If you amend with a design that allows you to vastly change your scope, and nothing is indicated that you actually possessed that increased scope in your original application (as here, the original with a fixed vertex defined by solid lines), by what right can you say that change to the broken lines neither affects the scope* (which it evidently does) or that the entire range of permutations was possessed at the time of the initial application?
*Not to be confused with Scope, a different brand by the same company
Where in the original filed application (the one with the single precise pentagram) is possession shown of the greatly expanded scope of all types of pentagrams?
Now, in the continuation, the claimed item doesn’t have to show these shifts, since the vertex is not being claimed. But can you really say that the inventor had possession at the time of the initial filing of the design with shifted vertices? It appears that a miracle has occurred, many from the one.
However, a continuation is filed that introduces two broken lines defining the bottom vertex of the pentagram.
Is the surface still claimed?
Since the broken lines don’t matter, would the claimed design cover a similar design wherein the vertex is shifter 90% to the left? How about 90% to the right?
For argument’s sake let’s agree that each such shift provides a substantial difference to the bottle.
Let’s see if I can walk you through an example:
The original design uses all heavy lines for the pentagram feature – the surface being different than the rest of the curved bottle. It is clear what is in possession at the time of filing. The solid lines show a single and precise pentagram configuration.
And for good reason. Designs that differ merely in the broken line region do not escape infringement, right?
Now I can see that if you have solid lines and then you want to have a continuation (by claiming less) and you make some of the lines into broken lines you may be in possession of the lesser item. But (critically) you also may not.
If the part being disclaimed is integral with the part you still want to claim (a surface for example), then you cannot introduce broken lines if those broken lines are critical to what you still want to claim.
I would posit that “clearly depicted” is the critical point here – that a design can radically change, and thus not be clearly depicted, if certain lines are amended.
Of course, we know that broken lines are the exception to what is presented as being possessed in the original – they hold no patentable weight, they are not desired to hold any patentable weight, and in essence, they are there merely as convenience and they are not to be considered as what the inventor “possessed.”
Arghh – in pieces as something is catching the blocking filter:
Jim,
Thanks for joining the blog.
Can you clarify something for me?
You indicate that amended drawings can depart from the original by changing shape or configuration. Isn’t that the very definition of new matter for design patents?
You also indicate that the original starting point for evaluating any type of new matter addition is “the drawings in a design patent application are the written description, along with any additional description in the specification, for the purpose of satisfying the requirements of 35 U.S.C. 112, 1st paragraph. Therefore, everything shown in the drawings, all surfaces of the article in which the design is embodied that are clearly depicted in the drawings are considered to have been described for purposes of section 112, 1st paragraph.”
Jim, I think the Ariad decision suggested that one had to not only enable an invention, but to claim it or to indicate that you recognized it was an invention to satisfy the written description requirement.
Possession? Recognition?
We shall see.
As a retired design patent examiner and practice specialist let me explain why I consider the rejection in this case improper. First some background information. It is well settled in case law that the drawings in a design patent application are the written description, along with any additional description in the specification, for the purpose of satisfying the requirements of 35 U.S.C. 112, 1st paragraph. Therefore, everything shown in the drawings, all surfaces of the article in which the design is embodied that are clearly depicted in the drawings are considered to have been described for purposes of section 112, 1st paragraph. It can only logically follow that if applicant is in possession of an entire surface shown in the drawings he is also in possession of all portions that make up that entire surface. To say otherwise makes no sense. How can one say I’m in possession of an entire surface of a bottle and not in possession of a portion of that surface? But that’s what the PTO is effectively saying. The PTO doesn,t argue that applicant wasn’t in possession of the two side faceted surfaces of the bottle as originally filed, presumable because they were defined by solid lines distinguishing them separately from the adjacent surfaces of the bottle. However, because the upper portion of the front surface of the bottle was not defined by a solid line boundary as originally disclosed this somehow means that applicant was not in possession of that portion of the front surface at the time the application was originally filed, and any later claim to just the upper portion of the front surface introduces new matter into the original disclosure?
In most instances, new matter in design patent practice involves either an addition to or a departure from the original disclosure. An addition to the original disclosure could be an added feature or detail or additional structure not shown in the drawings as originally filed. A departure from the original disclosure could be the removal of a feature or detail or a change in the shape and configuration of the article as shown in the drawings as originally filed. In the present case the amended drawings do not add any new features or details or additional structure, nor do they remove any features or details or change the shape and configuration of the bottle. All the amended drawings do is change the scope of the design claimed to just a portion of the bottle by reducing certain portions thereof to broken lines. Section 1504.04 of the MPEP clearly indicates that this is an acceptable amendment since “…the mere reduction of certain portions to broken lines….is not a departure from the original disclosure.”
The CAFC may prove me wrong, and that would be unfortunate because it would put a severe limitation on what an applicant can do to amend their drawings in order to change the scope of protection sought.
LOL,
Nice vacuous post MM.
“Dude, he possessed it”
“Dude” – stop hyperventilating. I said my question was different. If the “dude” possessed it, then the priority date innurs. If he did not, then it does not.
As I said, you are over-reading my question.
The question you seem to want to answer – one I did not ask – is what constitutes proof that he did or did not posses the invention based on the drawings submitted that may or may not have disclosed the item later claimed – that is, disclosed the particular version of the bottle as later claimed (did the initial filing have a drawing with the particular lines ghosted?). Take a deep breath (but not while you are eating popcorn) and realize which question I actually asked.
“ examiner would simply require the species be amended into the specification,”
In the example provided, the initial claims are already part of the spec, right?
35 USC 112, paragraph 2: the specification shall conclude with…
Ariad held, IIRC, that an originally filed application have a WD problem, but I think that might be limited to how to make or use the claimed invention, which would have little applicability to design patents.
Thus, a utility spec discloses species A, B, C and D, but not E. It claims E.
Because E is actually disclosed by the claim, I think the examiner would simply require the species be amended into the specification, but the rejection would be a 112, p.1 rejection, I would think. On the other hand, he might not reject at all, but simply object.
Ariad, IIRC, stood for the proposition that one had to describe how to make what was claimed when that was not known, but subject to undue experimentation or the like. But in truth, this still sounds more in lack of enablement.
Okey dokey, you asked “Um, how about a policy of just rewards? If an applicant truly did not possess an invention at time of filing, why should a priority date innure?
Dude, he possessed it — it was right there in the drawings submitted. It would be unjust to deny him ownership of what he conceived and disclosed to the world instead of going to his grave with a trade secret.
anon, you are going to have to re-state your question
[grabs popcorn]
LOL,
No MM, you don’t have the capability of pulling that off. For you, try to discuss substantive law without imploding in self-defeat. Start first with totally refraining from snark, insults, vapid “policy” statements, and your usual assortment of poor quality blog tactics of mischaracterizations, strawmen, red herrings and accusations. Stick to actual law and actual facts until you actually can handle those, then (and only then) should you even begin to contemplate the use of other rhetorical tools.
You should read just the 12:47 post – you are over-reading my question and likely answering IANAE, rather than me.
anon, you are going to have to re-state your question, because I think I answered it.
IBP Your writing is very heavily stylized
No it isn’t.
Maybe it would help if I threw in references to dead prisoners sitting on a fence firing arrows at your horses so they learn to drink. You know: plain language that everyone understands.
Read my question again American Cowboy – you are not answering the question I am asking.
“9-0. I’m still self-defeating on it.”
Corrected to accurately capture the statement as coming from MM.
“Try answering the question, anon, and explain your answer. ”
LOL – the backlog of questions to be answered with explanations is weighted far too heavily on things you need to provide MM. You are in no position to lecture anyone on “how that works.”
Btw – answers do not include snarky insults and questions asked back.
the fact that he later revised his claim to be a subcombination of the originally filed claim to the combination is not a sign he did not possess the subcombination.
That’s not the argument. The argument is that he never disclosed any subcombination in the original application. It’s a good argument, particularly in this case because … he never disclosed any subcombination in the original application.
The following hypothetical illustrates the issue quite plainly: what if Owen had filed the application with the identical full line drawing presented above, except that within each of the two presently claimed faceted shoulders Owen had additionally included, say, 129 additional full lines dissecting those facets into 100s of additional sub-facets (and no other additional disclosure). Do you believe that Owen the Inventor was in legal “possession” of every possible sub-combination of those facets and entitled to claim all of them?
There are some very serious logical problems with design patent law. This case highlights just one of those problems.
what if Owen had filed the application with the identical full line drawing except that within each of the two faceted shoulders presently claimed Owen had included, say, 129 additional full lines dissecting those facets into 100s of additional sub-facets (and no other additional disclosure). Do you believe that Owen the Inventor was in “possession” of every sub-combination of those facets?
Try answering the question, anon, and explain your answer. And let us know how you think this case is going to be decided and why.
Then we’ll have yet another datapoint by which we can evaluate our respective understanding of patent law. See how that works, anon?
9-0. I’m still loving it.
His application filing shows that he possessed the subject matter and more; the fact that he later revised his claim to be a subcombination of the originally filed claim to the combination is not a sign he did not possess the subcombination.
Check out and vote on this week’s new design patent cases at http://www.theordinaryobserver.com.
MM, your ignorance is only paralleled by your ego.
Another question for IPB and other design patent experts: what if Owen had filed the application with the identical full line drawing except that within each of the two faceted shoulders presently claimed Owen had included, say, 129 additional full lines dissecting those facets into 100s of additional sub-facets (and no other additional disclosure). Do you believe that Owen the Inventor was in “possession” of every sub-combination of those facets?
I think this case is a quintessential example of why we have a written description requirement. It’s also a great thought experiment demonstrating how easy it would be to launch giant stinkbombs into this extremely silly area of IP. No utility requirement? ROTFLMFAO.
to have to have made those explicit, well…
He/she is much more charitable than I am.
Right. Because nobody could have predicted that proper application of very reasonable laws will result in Owens application being flushed down the twahlet.
You think there’s going to be a different outcome, IBP? Place your bet and explain why. I mean, you’ve got the inside track being an expert practitioner and everything.
Nice try.
Not.
SSC pointed out some sources of law, and probably knows a lot more–but really, to have to have made those explicit, well…
He/she is much more charitable than I am.
Thanks SSC!
From 1504.04:
The scope of a claimed design is understood to be limited to those surfaces or portions of the article shown in the drawing in full lines in combination with any additional written description in the specification. …It is assumed that the claim has been crafted to protect that which the applicant “regards as his invention.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980)….It is prima facie evidence that the scope of the claimed design is limited to those surfaces “as shown” in the application drawing(s) in the absence of any additional written disclosure. See MPEP § 1503.01, subsection II.
I’m not aware of any written disclosure in this application that would suggest the design is broader than that depicted in full lines in the original disclosure.
But hey I’m just an experienced patent attorney. We need an “expert” like IBP to explain this stuff to us.
By the way, I love the dissent in In Re Daniels:
Appellant has fallen into a trap for the unwary. The appellant made a trifling misstep which has, for him, the momentous consequence that his novel design of a bar stool apparently loses the patent protection that he sought, and which otherwise he would have. The misstep was in drawing the seat of his stool in solid, instead of dotted lines.
Ha! Right. One of those “traps” for the “unwary” that’s actually just “an effup that could have been avoided if proper attention was paid”. File that dissent next to other “traps” for the “unwary” like “filing before the statutory bar” and “remembering to claim the invention.”
Um, how about a policy of just rewards?
If an applicant truly did not possess an invention at time of filing, why should a priority date innure?
What public policy is served by denying a priority date?