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Recent PTAB Guidance on Permissible Drawing Amendments for U.S. Design Applications

Protecting the Product Justin D. DeAngelis

Two recent decisions by the Patent Trial & Appeal Board (PTAB) highlight the nuances of allowable and impermissible drawing amendments during prosecution of U.S. design patent applications, and provide important guidance to design patent applicants on how to prepare their applications to ensure maximum flexibility during prosecution.

In Ex parte Bolognathe PTAB reviewed an appeal of an examiner’s rejection under 35 U.S.C. § 112(a) for lack of written description, and affirmed the rejection. The priority design application claimed “the ornamental design for a Protective Sports Helmet, as shown and described.”

The originally-filed drawings, a representative image of which is shown below, were depicted in mostly solid, claimed lines, with limited portions of the design shown in broken, unclaimed lines. The Applicant subsequently filed multiple sets of replacement drawings and cancelled each previous set. Figure 1 of the replacement drawings that were analyzed by the PTAB is shown below.

Original Figure 1 Replacement Figure 1

During examination, the examiner proffered that the original figure disclosure did not reasonably convey to a designer of ordinary skill in the art that the Applicant was in possession of the design as claimed in the later-filed replacement drawings at the time of the original application filing. In doing so, the examiner noted that new boundary edges had been introduced where none had previously existed, running afoul of the Federal Circuit’s decision in In re OwensThe PTAB agreed that the amended design conflicted with the standard set forth in Owens by improperly introducing boundaries of the claim during prosecution where none had previously existed, and in a way that was not reasonably conveyed by the original application filing. Interestingly, and unlike what had occurred in Owens, no actual boundary lines had been introduced here, but the PTAB found this to be a distinction without a difference.

Importantly, the PTAB in Bologna recognized the general permissibility of amending design drawings to convert some solid lines to broken lines where “reasonable conveyance” could be found, but asserted that “[n]onetheless, the written description requirement does fetter, to some extent, Appellant’s ability to broaden the claim via changing solid lines to broken lines.”

In contrast, the PTAB held in Ex parte Giza that drawing amendments made during prosecution that converted solid, claimed lines to broken, unclaimed lines were acceptable amendments under § 112. Giza involved a design application directed to an icon for a display screen, with the icon shown entirely in solid, claimed lines in each of the originally-files six figures. To overcome a double patenting rejection, the Applicant changed some of the solid, claimed lines to broken, unclaimed lines in each of the six figures. Representative images of original Figure 1 and replacement Figure 1 are shown below.

Original Figure 1 Replacement Figure 1

In its decision overturning the examiner’s rejection, the PTAB found that the amendments to the figures, which converted some lines from solid to broken lines, did not alter the nature of the claimed design, and that the newly-claimed arrangement of broken lines need not have been specifically depicted in the original drawings to satisfy the written description requirement. In support of its decision, the PTAB reasoned that since the Applicant had converted an entire existing length of certain solid lines to dashed lines without defining any new claim boundaries, the amendments were proper.

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