710 F.3d 1362 (Fed. Cir. 2013), 2012-1261, In re Owens

Docket Nº:2012-1261.
Citation:710 F.3d 1362, 106 U.S.P.Q.2d 1248
Opinion Judge:PROST, Circuit Judge.
Party Name:In re Timothy S. OWENS, Sheila M. Kelly, Robert M. Lynch, IV, Jason C. Campbell, and Philip E. Hague.
Attorney:Perry J. Saidman, Saidman DesignLaw Group, LLC, of Silver Spring, Maryland, argued for appellants. Of counsel on the brief was David M. Weirich, The Procter & Gamble Company, of Cincinnati, OH. William Lamarca, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virgini...
Judge Panel:Before PROST, MOORE, and WALLACH, Circuit Judges.
Case Date:March 26, 2013
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1362

710 F.3d 1362 (Fed. Cir. 2013)

106 U.S.P.Q.2d 1248

In re Timothy S. OWENS, Sheila M. Kelly, Robert M. Lynch, IV, Jason C. Campbell, and Philip E. Hague.

No. 2012-1261.

United States Court of Appeals, Federal Circuit.

March 26, 2013

Page 1363

Perry J. Saidman, Saidman DesignLaw Group, LLC, of Silver Spring, Maryland, argued for appellants. Of counsel on the brief was David M. Weirich, The Procter & Gamble Company, of Cincinnati, OH.

William Lamarca, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor and Lynne E. Pettigrew, Associate Solicitor. Of counsel was Scott Weidenfeller, Associate Solicitor.

Tracey-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, for amicus curiae. With her on the brief were David K.S. Cornwell, Jon E. Wright and Jonathan M. Strang.

Before PROST, MOORE, and WALLACH, Circuit Judges.

PROST, Circuit Judge.

Timothy S. Owens, et al. (" Owens" ) appeal a decision of the United States Patent and Trademark Office (" PTO" ) Board of Patent Appeals and Interferences (" Board" ), Ex parte Owens, No. 2010-5622 (B.P.A.I. Dec. 1, 2011) (" Board Op." ), affirming a rejection of his design patent application, U.S. Design Patent Application No. 29/253,172 (filed Feb. 2, 2006) (" '172 application" ). For the reasons set forth below, we affirm.

I

The '172 application, which is the subject of this appeal, is a continuation of U.S. Design Patent Application No. 29/219,709 (filed Dec. 21, 2004) (" '709 application" ). The '709 application claimed a design for a bottle with boundaries set forth in the figures below:

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Page 1364

'709 application Figs. 1-3. The '709 application ultimately issued as U.S. Design Patent No. D531,515 (issued Nov. 7, 2006) (" '515 patent" ), and that issuance is not contested here.

Owens then filed the '172 application in 2006, seeking the benefit of the '709 application's 2004 priority date under 35 U.S.C. § 120. Owens conceded during prosecution that, if denied the earlier effective filing date, the '172 application would be unpatentable because he had sold bottles embodying his design more than one year before filing his continuation. Board Op. at 3-4.

The '172 application claimed certain design elements found on the top and side portions of the original bottle, as depicted in Figures 1 through 3:

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Page 1365

'172 application Figs. 1-3 (as amended Oct. 29, 2008). In particular, the '172 application claimed three design elements: (1) the small crescent-shaped area on the front and back of the bottle near the cap; (2) the narrow triangular areas along the bottle's " shoulders; " and (3) an upper portion of the bottle's pentagonal center panel. To indicate what portion of the center area was claimed, Owens bisected the top of his pentagonal panel with a broken line.

The examiner rejected the '172 application. The basis for the rejection was the addition of the broken line, which the examiner understood as defining an entirely new " trapezoidal" -shaped surface that was considered new matter:

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J.A. 162. The examiner found no evidence that Owens originally possessed such a trapezoidal region in the '709 application. As such, the examiner rejected the '172 application for lack of written description under 35 U.S.C. § 112, ¶ 1, and furthermore rejected the application as unpatentably obvious in view of the earlier-sold bottles under 35 U.S.C. § 103(a).

Owens appealed to the Board, which noted at the outset that the correctness of the examiner's § 103(a) rejection depended on whether the '172 application was entitled to the benefit of the '709 application's filing date. Board Op. at 3-4. That issue, in turn, hinged on whether the '709 application contained a written...

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