On March 26, 2013, in In re Timothy Owens, the US Court of Appeals for the Federal Circuit issued an opinion affirming the USPTO Board of Patent Appeals and Interferences's (BPAI) rejection of Owens's design patent application.

Owens filed US Design Patent Application No. 29/253,172 ('172 application) in 2006 as a continuation of US Design Patent Application No. 29/219,709 ('709 application). The '709 application (issued as US Design Patent No. D531,515) claimed a design for a mouthwash bottle having an inverted pentagonal front panel.

The '172 application sought the benefit of the '709 application's 2004 priority date under 35 U.S.C. § 120. Among other design elements, the '172 application claimed an upper portion of the bottle's pentagonal center panel. To show the portion of the center area claimed, Owens bisected the top of the pentagonal panel with a broken line.

The patent examiner found that the newly added broken line defined an entirely new trapezoidal-shaped surface that was considered new matter. The examiner therefore rejected the continuation application on the basis that it:

Both the BPAI and the Federal Circuit affirmed the rejection, finding that nothing in the written description of the parent's disclosure suggested that the trapezoidal top portion of the front panel might be claimed separately from the rest of the front panel.

The key takeaway is the Federal Circuit's discussion concerning whether, and under what circumstances, Owens could introduce an unclaimed boundary line on the center panel and still receive the benefit of 35 U.S.C. § 120.

The court noted that the Manual of Patent Examining Procedure (MPEP) provided some direction on this issue, saying that unclaimed boundary lines may be acceptable when connecting the ends of existing full lines (MPEP §1503.02). However, the court found that this rule would make it acceptable for Owens to bisect his front panel with a broken line along the pentagon's widest point. The court noted that this boundary would simply outline a larger trapezoidal area and so the resulting claim would have the same written description problem as the '172 application.

The court concluded that the best advice for future applicants was set out in the USPTO's brief in this case, 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 at oral argument the USPTO's counsel conceded that he could not reconcile all past allowances under this standard, he maintained that the USPTO will use it to evaluate all future applications.