144 F.3d 1452 (Fed. Cir. 1998), 97-1225, In re Daniels

Docket Nº:97-1225.
Citation:144 F.3d 1452
Party Name:46 U.S.P.Q.2d 1788 In re Scott J. DANIELS.
Case Date:May 20, 1998
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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144 F.3d 1452 (Fed. Cir. 1998)

46 U.S.P.Q.2d 1788

In re Scott J. DANIELS.

No. 97-1225.

United States Court of Appeals, Federal Circuit

May 20, 1998

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S. Michael Bender, S. Michael Bender, P.A., of Gulfport, Florida, argued for appellant.

Karen A. Buchanan, Associate Solicitor, Office of Solicitor, of Arlington, Virginia, argued for appellee. With her on brief were Nancy J. Linck, Solicitor, and Albin F. Drost, Deputy Solicitor.

William T. Fryer, III, of Bethesda, Maryland, filed a brief as amicus curiae.

Before NEWMAN, LOURIE, and BRYSON, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Scott J. Daniels appeals the decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences, wherein the Board determined that Mr. Daniels' design patent application was not entitled to the benefit of the filing date of an earlier copending design application, and

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thus that the subject matter was unpatentable for obviousness in view of an intervening publication. 1

On June 22, 1992 Mr. Daniels, through American Inventors Corporation, filed design patent application Serial No. 07/902,055 for a "leecher," a device for trapping leeches. The specification consisted of seven drawings, including top (Fig.5) and bottom (Fig.6), and side views showing the leecher decorated on each side with a pattern of leaves, as in Fig. 1:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


While the patent application was pending the Federal Trade Commission charged American Inventors Corporation with running a deceptive invention-promotion scheme. See Federal Trade Comm'n v. American Inventors Corp., 37 U.S.P.Q.2d 1154, 1995 WL 768924 (D.Mass.1995). The Board reports the charges that American Inventors Corporation misled inventors by filing design patent applications instead of utility applications and concealing the differences between them. The Board describes evidence that clients were given a money-back guarantee that a patent would issue, and evidence that the Corporation's draftsman would add decorative matter to the drawings to facilitate issuance as a design patent. Daniels, 40 U.S.P.Q.2d at 1397-98.

On April 1, 1994 Mr. Daniels, through new counsel, filed a continuation design application under 37 C.F.R. § 1.62, Serial No. 29/020,787, and by amendment directed the

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PTO's Official Draftsman to delete the leaf pattern from the drawings. No other changes were made. The application thus contained drawings as shown below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


The examiner rejected the application in view of an intervening marketing brochure showing the leecher of the parent application. This rejection would be obviated if Mr. Daniels were entitled to the priority date of the parent application in accordance with 35 U.S.C. § 120:

§ 120. An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... shall have the same effect, as to such invention, as though filed on the date of the prior application, ...

The Board...

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