Advisory opinion in In re Owens?

The case In re Owens concerns a continuation
application of a design patent application for a design for a bottle.

Of "written description,"

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.” Ariad, 598 F.3d at 1351
(second alternation in original) (emphasis added) (internal
quotation marks omitted); Daniels, 144 F.3d at 1456
(“The [written description] inquiry is simply to determine
whether the inventor had possession at the earlier date of
what was claimed at the later date.”). In this case, Owens’s
parent application discloses a design for a bottle
with an undivided pentagonal center-front panel, whereas
the continuation claims only the trapezoidal top portion of
that center-front panel. Therefore, the question for written
description purposes is whether a skilled artisan
would recognize upon reading the parent’s disclosure that
the trapezoidal top portion of the front panel might be
claimed separately from the remainder of that area.
Ariad, 598 F.3d at 1351.

The CAFC gets into a hypothetical, and potentially,
advisory, area:

Lastly, we turn to a question raised implicitly in Owens’s
appeal and explicitly in amicus briefing—whether,
and under what circumstances, Owens could introduce an
unclaimed boundary line on his center-front panel and
still receive the benefit of § 120.
The Manuel of Patent Examining Procedure (“MPEP”)
provides some direction in this regard, saying that unclaimed
boundary lines “may” be acceptable when “connecting
the ends of existing full lines.” MPEP § 1503.02.
Were this the rule, it might be acceptable for Owens to
bisect his front panel with a broken line along the pentagon’s
widest point. However, it seems that such a boundary
would simply outline a larger trapezoidal area, and so
the resulting claim would suffer from the same written
description problems as the ’172 application.
Prior PTO practice offers similarly ambiguous guidance.
For instance, the amicus brief noted certain past
allowances that seemingly contradict both the MPEP and
the PTO’s rejection of the Owens continuation. Compare
the ’702 application, and the ’172 application, with U.S.
Patent No. D545,954 (issued July 3, 2007) (parent design
patent claiming humidifier), and U.S. Patent No.
D569,958 (issued May 27, 2008) (continuation allowed
despite having areas of humidifier bisected with unclaimed
boundary lines).2
In our view, the best advice for future applicants was
presented in the PTO’s brief, which argued that 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. Although counsel for the PTO conceded
at oral argument that he could not reconcile all past
allowances under this standard, he maintained that all
future applications will be evaluated according to it.
This rule comports with our understanding of how unclaimed
boundary lines generally should affect entitlement
to an earlier filing date under § 112, ¶ 1, and § 120.
Its implications for Owens’s case should be obvious.