Daniels, In re

• Decision Date: 20 May 1998
• Docket Number: No. 97-1225,97-1225
• Citation: 46 USPQ2d 1788,144 F.3d 1452
• Parties: In re Scott J. DANIELS.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1452

144 F.3d 1452

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.

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 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:

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

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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

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:

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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, describing the question as one of first impression, denied Mr. Daniels the benefit of his parent application, holding that the leecher shown in the continuing application is a "new and different" design in that a design is "a unitary thing," and thus that the change in the drawings defeats compliance with the written description requirement of the first paragraph of 35 U.S.C. § 112:

§ 112 p1. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Mr. Daniels appeals, arguing that his parent application fully discloses the leecher design of the continuing application, and thus meets the requirements of § 112 p 1.

DISCUSSION

Entitlement to priority under § 120 is a matter of law, and receives plenary review on appeal. Racing Strollers, Inc. v. TRI Industries, Inc., 878 F.2d 1418, 1419, 11 U.S.P.Q.2d 1300, 1301 (Fed.Cir.1989) (in banc ). Any disputed factual questions are reviewed on the clearly erroneous standard. In re Gosteli, 872 F.2d 1008, 1012, 10 U.S.P.Q.2d 1614, 1618 (Fed.Cir.1989).

The statutory provision governing the effective filing date of the subject matter of continuing applications, 35 U.S.C. § 120, applies to design patents as to utility patents. See 35 U.S.C. § 171 ("The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided"). It was confirmed in Racing Strollers that "[t]here are no 'otherwise provided' statutes to take design patent applications out of the ambit of § 120 which makes no distinction between applications for design patents and applications for utility patents...." 878 F.2d at 1421, 11 U.S.P.Q.2d at 1302.

That the law of § 120 applies to design patent applications is illustrated in the court's rulings that design and utility patents are each entitled to claim priority from the other. See Racing Strollers, 878 F.2d at 1418, 11 U.S.P.Q.2d at 1300 (overruling contrary precedent and holding that a design patent may claim priority from a utility patent); KangaROOS, U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 U.S.P.Q. 32, 33 (Fed.Cir.1985) (holding that a utility patent may claim priority from a design patent). The common thread, and the criterion to be met, is whether the later claimed subject matter is described in the earlier application in compliance with § 112 p 1. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 557, 32 U.S.P.Q.2d 1077, 1081 (Fed.Cir.1994) ("an application is entitled to the benefit of the filing date of an earlier application as to common subject matter" when the requirements of § 112 p 1 are met); In re Hogan, 559 F.2d 595, 604, 194 U.S.P.Q. 527, 535 (1977); In re Van Langenhoven, 59 C.C.P.A. 934, 458 F.2d 132, 136, 173 U.S.P.Q. 426, 429 (1972); In re Lukach, 58 C.C.P.A. 1233, 442 F.2d 967, 968, 169 U.S.P.Q. 795, 797 (1971).

Thus the earlier application must meet the written description requirement of § 112. The test for sufficiency of the written description is the same, whether for a design or a utility patent. This test has been expressed in various ways; for example, "whether the disclosure of the application relied upon 'reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.' " Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 U.S.P.Q. 177, 179 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 U.S.P.Q. 1089, 1096 (Fed.Cir.1983)). When the earlier disclosure is less than clear on its face, courts have explained that the prior application must "necessarily" have described the later claimed subject matter. Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1423, 5 U.S.P.Q.2d 1194, 1198 (Fed.Cir.1987). In general, precedent establishes that although the applicant "does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [the applicant] invented what is claimed." In re Gosteli, 872 F.2d at 1012, 10 U.S.P.Q.2d at 1618 (citations omitted).

It is the drawings of the design patent that provide the description of the invention. In re Klein, 987 F.2d 1569, 1571, 26 U.S.P.Q.2d 1133, 1134 (Fed.Cir.1993) ("usual[ly] in design applications, there is no description other than the drawings"). Although linguists distinguish between a drawing and a writing, the drawings of the design patent are viewed in terms of the "written description" requirement of § 112. Thus when an issue of priority arises under § 120, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 U.S.P.Q.2d 1111, 1116 (Fed.Cir.1991); Racing Strollers, 878 F.2d at 1420, 11 U.S.P.Q.2d at 1301. The inquiry is simply to determine whether the inventor had possession at the earlier date of what was claimed at the later date.

The leecher as an article of manufacture is clearly visible in the earlier design ...