Appeal from a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences dated November 5, 1996 William T. Fryer, III 7507 Clarendon Road Bethesda, Md. 20814 (301) 656-9479

Amicus Curiae

August 11, 1997


I. As a matter of law, in applying 35 U.S.C. §§ 112 and 120, when a first filed combination design patent application disclosure includes a subcombination design configuration that is independent and distinct from surface indicia ornamentation, can the configuration features be disclosed and claimed separately in a copending application and receive the first filed application filing date?

II. As a factual issue, was the Board of Patent Appeals and Interferences (Board) clearly erroneous in holding that the claimed configuration features in Daniels' design application serial no. 29/020,787 ('787 application), filed April 1, 1994, were not entitled to the benefit of the filing date of the application 07/902,055 ('055 application), filed June 22, 1992?


This appeal addresses a fundamental design patent law issue in an unfortunate background. The inventor's business relation with the invention marketing company will be resolved in other proceedings. The facts are clear that inventor Daniels filed the '787 application to protect the ornamental design of a device to attract and retrieve leeches. The '787 application disclosed device had configuration features and an insignia, or emblem surface indicia, resembling a flower-shaped ornamentation. After filing the initial application, Daniels chose to patent the subcombination configuration, the design disclosed in the '787 application without the insignia or emblem surface indicia. He filed a second, copending application, '055, disclosing and claiming only the configuration subject matter and requested the benefit of the '787 application filing date, relying on 35 U.S.C. §120. The Patent and Trademark Office (PTO) examiner, affirmed by the Board, denied the request for benefit of the '787 application filing date, based on a lack of disclosure of the claimed invention in the '787 application, relying on 35 U.S.C. §§ 120 and 112, first paragraph.


1. Patent law applies to utility and design applications, unless there is a specific statutory, regulation or court interpretation on design patents in conflict. Section 120, as a matter of law, applies to design applications, allowing a subcombination design to receive the benefit of a prior filing date for a disclosed combination design. The same procedure and case law applied to mechanical and electrical inventions should apply to design applications. The Board was in error, as a matter of law, for denying the benefit of §120 to design patent applications for subcombination designs.

2. The factual question of whether Daniels' '055 design application was entitled to the '787 application filing date is basically a disclosure question. The determination is by one skilled in the industrial design art, who would provide the ornamentation for this product. This person would identify that Daniels' configuration design was disclosed as an independent and distinct design. The process by which the Daniels' product design was created, and other examples, demonstrate the Board's factual conclusion was clearly erroneous.


ISSUE I Before reaching the factual issue, it is necessary to decide a general patent law point applied to design patents. This issue should be reviewed de novo by the Court. Kennecott Corp. v. Kyocera International Inc., 835 F.2d 1419, 1420; 5 USPQ 2d 1194, 1195 (Fed. Cir. 1987); cert. denied, 486 U.S. 1008 (1988).

A. RELEVANT DESIGN PATENT LAW FUNDAMENTALS The general patent law applies to design patents, unless there is a specific provision in the patent statute or rules for design patents that is in conflict. Patent law, 35 U.S.C. §171, second paragraph, makes this relationship clear: The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

The statutory basis for a utility patent or design patent application receiving the benefit of a prior filed, copending application is 35 U.S.C. §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, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

In general, the policy behind §120 (all references to code sections are to 35 U.S.C., unless otherwise stated) is to allow applicants some flexibility to submit in a subsequent application addition or amended claims, or to seek protection on independent and distinct designs disclosed in a prior, copending application. An important requirement in §120 is that the claimed invention must be disclosed in the prior, copending application to one skill in the art, as defined in §112, first paragraph: The specification shall contain a written description of the invention, and 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, ....

The policy supporting the §112, first paragraph, disclosure provision is to establish that the inventor was in possession of that invention at the time of the first application filing. In re Wertheim, 541 F.2d 257, 262;191 USPQ 90, 97 (CCPA 1976); appeal after remand, 646 F.2d 527, 209 USPQ 554 (CCPA 1981). In the case of an ornamental design invention, this person is a designer skilled in the art of creating the ornamental product design. In analyzing a §120 situation, the issue is not a question of whether new matter has been added to an application. It is preferable to examine the basic issue of §112, first paragraph, on disclosure adequacy. In re Rasmussen, 650 F.2d 1212, 1214; 211 USPQ 323, 325 (CCPA 1981). There are many cases deciding whether the requirements of §120 were met for utility patent inventions and ornamental design inventions (See Appellant's brief). It is clear both a utility application and design patent application can be the basis for establishing an earlier filing date for a subsequently filed design patent application. Surface indicia, like emblems and insignias, can be protected separated on a product in a design patent. The case law has identified three general types of design that can be protected. They are configuration alone, surface indicia ornamentation, and the combination of configuration and surface indicia ornamentation. In re Zahn, 617 F.2d 261, 204 USPQ 988, 995 (CCPA 1980). Since a design patent can contain only one claim, limiting it to one of these areas of subject matter, the importance of having a flexible and fair interpretation of the law on filing related applications for optimum protection is very important to design practice, to keep costs down and simplify procedures. The one claim procedure for each design patent was not the practice during part of the history of design patent law, as evidenced by the case of Dobson v. Hartford Carpet Co, 114 U.S. 439 (1885). In the period around 1885, applicants could file several claims in a design application, to various combination and subcombinations of features shown in a single combination disclosure. This practice must have been too difficult for the PTO to handle, so the single design claim per application, as defined by the solid line drawing figures was adopted, and it is currently in use. In re Zahn, 617 F2d 261, 204 USPQ 988 (CCPA 1980); Manual of Patent Examining Procedure (hereafter MPEP), §1502.03(C) (Rev. 2, 1996). This evolution created a more rigid and expensive design patent practice. The observations made by Professor Robinson, in 1890, suggested that elements in a combination may be the subject of separate protection. In connection with joinder of inventions in one patent, he stated: Owning to the peculiar character and functions of a design, it is scarcely conceivable that any two designs could be dependent on each other or capable of acting toward common end except as elements in a combination; and therefore but one separate design can be included in a patent, although where several subordinate designs unite to form a new one the application for a patent for the new design may embrace all the elements and sub-combinations of which it consists. (footnote omitted, including cases cited relating to multiple claims in one design patent; emphasis added). William C. Robinson, The Law of Patents for Useful Inventions 65-6 (1890).

Professor Robinson confirmed that at that time it was the practice to permit multiple claims in a design application, to the combination and subcombination design inventions.

B. DESIGN PATENT APPLICATION BENEFIT, AS A MATTER OF LAW, UNDER §120, FOR A SUBCOMBINATION DESIGN DISCLOSED IN A SUBSEQUENTLY FILED COPENDING APPLICATION It is respectfully submitted that, as a matter of law, a product design configuration when separable and distinct from product surface indicia, can be claimed separately in a copending application and receive the benefit of the filing date of the earlier design combination application. The Board has concluded, in general, that there can be no filing date benefit for a subcombination design disclosed in a prior filed design combination. It has decided that a design application disclosure is limited to what is shown, the combination, for purposes of §§ 120 and 112, first paragraph. The Board did not recognize that in general patent law there are combination disclosures that form the basis for filing date benefit on subcombination claims. This practice is well established and described fully, in general terms, in PTO guidelines. MPEP §§201.07, 201.08, 201.11, 1504.05 and 1504.20 (Rev. 2, 1996). The MPEP now incorrectly implies, in the following statement, that there can be no basis for claiming a subcombination in a subsequently filed, copending design application: A design application may be considered to be a division of a utility application (but not a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112, first paragraph. MPEP §201.06 (Rev. 2, 1996).

If the MPEP language "shows the same article" means that only a combination design can received the benefit of §120, this guideline is inconsistent with the law under §120. MPEP guidelines are not binding on the Court. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 1422; 11 USPQ2d 1300, 1303 (Fed. Cir. 1989). It is easy to see how this confusion might happen, in the context of design applications, where the disclosure and the claim are the same, usually. It helps to remember that the §112, first paragraph, test for disclosure is different from the test for determining what is claimed in a design patent application under §112, paragraph 2, for infringement or prior art analysis. What the Board failed to observe was that, under §120, a design patent application drawings can disclose a product design combination, with a subcombination that is independent and distinct. A subsequently filed, copending application on a subcombination may receive the benefit of the parent application filing date. The test for determining whether this benefit is awarded is defined in §112, first paragraph, i.e., how one skilled in the design art views the parent disclosure (discussed below in the argument on Issue II).

C. THE IN RE SALMON AND HAMILTON DECISION IS NOT RELEVANT TO THIS CASE The In re Salmon and Hamilton decision involved a design patent application on which the benefit of a filing date under §120 was sought, based on a prior filed design patent application. In re Salmon and Hamilton, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). The disclosure in the first application was a stool with a square shaped seat and a singular bent tubular support. The later filed, copending design patent application claimed a rounded seat and a support virtually identical to the earlier filed application support. The Federal Circuit affirmed the Board decision that denied the benefit of the filing date of the first application for the second application claim. The second application combination claimed design was not disclosed in the first application. The issue of whether a subcombination invention was disclosed in the first application and claimed in the second application was not addressed on these facts.

D. THE FAILURE OF THE BOARD TO APPLY THE CORRECT LEGAL STANDARD The Board did not applied the correct legal standard to decide this case. It is clear that the Board did not used the proper test under §120 and §112, first paragraph. Since the Board has in incorrect legal basis for its decision, there is reversible error. In the alternative, since the Board has rejected, as a matter of law, that a subcombination design can be claimed in a separate application and receive the parent application filing date, this interpretation is reversible error. Now that the proper legal standard has been identified, the next step is to analyze the factual issue, whether a person skilled in the design art would consider the Daniel subcombination design independent and distinct, entitling it to the benefit of §120.

ISSUE II A. THE DANIELS' COPENDING '055 DESIGN PATENT APPLICATION SUBCOMBINATION PRODUCT CONFIGURATION IS ENTITLED TO THE BENEFIT OF THE FILING DATE OF THE EARLIER FILED, COPENDING '787 DESIGN PATENT APPLICATION, UNDER §120 As discussed in connection with Issue I, the proper test to determine whether there is support for receiving the benefit of a filing date, under §120, for a copending application is defined in §112. The person skilled in the design field would be one who is responsible for the industrial design work on products like the Leecher device claimed by Daniels. This person would evaluate, based on the '787 application disclosure, whether there was disclosed an independent and distinct subcombination configuration design. Since the law recognizes product configuration design features as separately protectable, and product surface indicia ornamentation as separately protectable, the legal framework for protection exits. One skilled in the design art would be involved in two separate steps in ornamenting the Daniel device. The configuration features would be planned. A separate step would be to provide surface indicia ornamentation, an insignia or emblem for the device. The Daniels' case evidence supports this view of a designer's role. The original disclosure of Daniel to the invention marketing company was for only the configuration. Another person added the emblem or insignia to the surface, for reasons not pertinent to this analysis. There were two steps, at separate times. These facts alone support the conclusion that the configuration design disclosed in the original application is an independent and distinct invention from the emblem or insignia surface indicia. The Daniel configuration design is visually separable and distinct from the surface indicia emblem or insignia ornamentation shown in the combination disclosure of the first application. The statutory requirements of §§ 120 and 112, paragraph 1, have been met. There is another basis for finding the '055 application is entitled to the filing date of the '787 application. The configuration subcombination design claimed in the second application can be used without the insignia or emblem surface indicia. The proper §120 interpretation for design patent applications is the same as for mechanical or electrical inventions. For example, a electronic device disclosing a combination can include independent and distinct subcombinations. The subcombinations can be separately useful and independently patentable. These subcombinations can be claimed in a copending application that receives the filing date of the combination, parent application. No special intent to use the subcombination separately is required to obtain this continuity. The Board has held in this case, effectively, that there is no right to claim in a divisional application a subcombination design. Part of the Board's confusion on this point may come from the MPEP, although the MPEP is not controlling (See Issue I Argument concerning MPEP §201.06). The PTO may permit claims to combination and subcombinations in one application, based on an analysis under restriction practice, under § 121. MPEP §801-803.03(b) (Rev. 2, 1996). An applicant can voluntarily file a copending application and disclose the subcombination, receiving continuity between the applications. MPEP §§201.06 and 201.11 (Rev. 2, 1996). Design applications are subject to the same law on restriction and continuity, under §§ 121 and 120, respectively. A procedural difference is that a design patent application can only have one claim [the solid lines of the drawings; 37 C.F.R. §1.153 (1996)], while utility patent applications can have multiple claims, to the combination and subcombinations. It is important not to confuse claim practice law with disclosure practice law. It is at this point the Board's interpretation and conclusion are improperly limited. A design application subcombination design is entitled to the benefit of §120 even if it is not claimed in the parent combination application. All that is required is that the subcombination be disclosed in the parent application, as viewed by one skilled in the design art, for the subcombination design application to receive benefit of §120. The Daniel '055 design patent application meets these requirements and should receive the filing date of the '787 application for the configuration subcombination.

B. EXAMPLE FROM THE ARCHITECTURE DESIGN FIELD IN SUPPORT OF DANIELS' RIGHT TO RECEIVE BENEFIT OF §120 Another example of a design product may be useful to help illustrate the importance of the issues in this case to effective design protection. Part of this brief was drafted while attending the Paris, France, meeting of the Association for the Advancement in Teaching and Research in Intellectual Property (ATRIP). During that visit the Notre Dame Cathedral was observed. The overall appearance of this Cathedral is breathtaking from a distance, as viewed from the east, across the Seine on the Right Bank. The individual, animal like figures on the upper walls (gargoyles) are part of the combination. The combination building configuration and the figures are independent and distinct from each other. In a design sense they are separate works. The animal like figures played an important, separable role in the recent Disney movie, The Hunchback of Notre Dame. A prior filed, copending, design patent application disclosing the Notre Dame Cathedral combination should provide support for a copending application claim to the cathedral configuration without the figures. This procedural flexibility under the law is important to the design owner, to give adequate scope of protection, based on an initial filing of a combination design application.

C. EXAMPLE FROM THE ART FIELD IN SUPPORT OF DANIELS' RIGHT TO RECEIVE THE BENEFIT OF §120 A visit to the Louvre Art Museum in Paris is a dramatic visual experience. Many paintings of master artists are seen in a setting of perfectly matched picture frames that have distinctive shapes. The most celebrated pictures, like the Mona Lisa, are duplicated for sale and placed in attractive frames. The picture display combination with the frame represents a design protectable in a design patent. A design patent application, subsequently filed and copending, disclosing only the subcombination frame, should be able to receive under §120 the filing date of the parent combination application. The frame is an independent and distinct design. It is visually separable in the combination and the result of a separate design effort. The frame can be used for other pictures, and it can be sold separately, such as to display a woven fabric design. While all these factors need not be present to have an independent and distinct design subcombination, the example is another demonstration that a combination design can have a protectable subcombination disclosed.

D. OTHER FACTORS INFLUENCING U.S. DESIGN PATENT LAW AND THIS CASE There were other relevant observations made in Paris, with regard to design protection. Almost all countries have design protection laws. France has one of the most extensive and flexible approaches to design protection for most design works, with overlapping copyright and registration protection (the registration is similar to the U.S. design patent). The U.S. has a more limited approach to design copyright protection. For this reason, U.S. design owners are very dependent on an effective and flexible U.S. design patent system. The U.S. design patent system is viewed internationally as quite difficult and limited, in comparison to systems in many other countries, although recent progress has been made by this Court and improvements in the PTO. The Daniels appeal requests flexibility, within the present law. Design protection was also the subject of the recent GATT-TRIPS treaty. The Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, opened for Signature Apr. 15, 1994, 33 I.L.M. 81 [hereafter GATT-TRIPS]. Article 25 of that treaty set several international standards for each country to have effective design protection that the U.S. and other members countries must follow. The questions raised in the Daniels case were not directly addressed in the GATT-TRIPS treaty. The overall spirit of the GATT-TRIPS treaty, especially as expressed article 25,

paragraph 2, was to encourage a flexible and low cost approach to design protection: Each member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law. The U.S. international posture on design protection needs to have this favorable approach.

It is respectfully submitted that the Daniel case is an example of where U.S. design patent procedure needs to reflect its flexibility, within the law.


It is respectfully submitted that the Board's decision in the Daniels case should be reversed. The '787 design patent application should have the benefit of the earlier filed '055 design patent application. The author of this brief wishes to thank the Court for the opportunity to submit his views on this important case.


If the Court requests, the author of this brief will be willing to participate in oral argument on this case.

William T. Fryer, III

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