On March 26, 2013, the Federal Circuit denied the attempts of a mouthwash bottle designer to claim only certain portions of a Crest mouthwash bottle in a continuation application, thus affirming the PTO’s rejection of the application.    In re Owens, No. 2012-1261 (Fed. Cir. March 26, 2013).   At issue was whether the continuation application claiming only a portion of a bottle in solid lines would be entitled to an earlier effective filing date based on the prior application showing the entire bottle in solid lines.[1]   The court concluded that dashing a boundary line not previously shown in the priority application constituted an introduction of new matter which obviated the priority claim.

 The court noted that “a design patentee may, under certain circumstances, introduce via amendment a straight broken line without adding new matter, even ‘[w]here no [corresponding] boundary line is shown in a design application as originally filed.’” However, the amendment must comply with the written description requirement, and thus avoid the introduction of new matter.  “The written description question does not turn upon what has been disclaimed, but instead upon whether the original disclosure ‘clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’”  In other words, it must be shown that the inventor had possession at the earlier date of what was claimed at the later date.

The Federal Circuit held that substantial evidence supported the board’s finding that nothing in the parent application’s disclosure suggested possession of the later claimed design.  The original disclosure indicates the design as a bottle with an undivided pentagonal center-front panel.  The board concluded that the continuation’s introduction of a broken line bisecting the parent’s pentagonal front panel was not supported in by this original disclosure, and the Federal Circuit affirmed.

In dicta, the court offered the following advice to future applicants – “unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.”

[1] The applicant conceded that, if denied the earlier effective filing date, the design would not be patentable because he had sold bottles embodying his design more than one year before filing the continuation application.