[Federal Register Volume 81, Number 73 (Friday, April 15, 2016)]
[Notices]
[Pages 22233-22236]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-08760]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2016-0001]
Request for Comments on the Application of the Written
Description Requirement to Specific Situations in Design Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice and request for comments.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') is evaluating how the written description requirement
applies to certain design applications. In particular, the USPTO has
developed a proposed approach for design examiners to apply general
principles governing compliance with the written description
requirement to specific situations in design applications. The USPTO is
seeking public comment on the
[[Page 22234]]
proposed approach as well as examples that the public believes would be
helpful to illustrate the proposed approach or any suggested approach
for applying the written description requirement in design
applications.
DATES: Written comments must be received on or before June 14, 2016.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet (email) addressed to: [email protected].
Comments may also be submitted by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Nicole D. Haines.
Although comments may be submitted by postal mail, the USPTO
prefers to receive comments by email in order to facilitate posting on
the USPTO's Internet Web site. Plain text is preferred, but comments
may also be submitted in ADOBE[supreg] portable document format or
MICROSOFT WORD[supreg] format. Comments not submitted electronically
should be submitted on paper, and will be digitally scanned into
ADOBE[supreg] portable document format.
The comments will be available for public inspection, upon request,
at the Office of the Commissioner for Patents, currently located at
Madison Building East, Tenth Floor, 600 Dulany Street, Alexandria,
Virginia. Comments also will be available for viewing via the USPTO's
Internet Web site (http://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does
not desire to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
may be directed to Nicole D. Haines, Senior Legal Advisor, Office of
the Deputy Commissioner for Patent Examination Policy, by telephone to
(571) 272-7717, or to Erin M. Harriman, Legal Advisor, Office of the
Deputy Commissioner for Patent Examination Policy, by telephone to
(571) 272-7747. Alternatively, mail may be addressed to: United States
Patent and Trademark Office, Mail Stop Comments--Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Nicole D. Haines.
SUPPLEMENTARY INFORMATION:
I. Background
The USPTO held a roundtable on March 5, 2014 (``Roundtable''), to
solicit public opinion regarding the written description requirement of
35 U.S.C. 112(a), or pre-America Invents Act (``AIA'') 35 U.S.C. 112,
para. 1 (``35 U.S.C. 112(a)'') as applied to design applications in
certain limited situations. Specifically, the USPTO sought comments on
the application of the written description requirement to an amended
claim or a claim in a continuing design application (``later-claimed
design'') that includes only a subset of originally disclosed elements
(the later-claimed design does not introduce any new elements that were
not originally disclosed). See Request for Comments and Notice of
Roundtable Event on the Written Description Requirement for Design
Applications, 79 FR 7171 (Feb. 6, 2014) (``the Notice''). As discussed
in the Notice, it has been the experience of the USPTO that in the vast
majority of cases there is no question that a later-claimed design,
composed of only a subset of originally disclosed elements, satisfies
the written description requirement. In certain limited situations,
however, the subset of originally disclosed elements, although visible
in the original disclosure, composes a later-claimed design that an
ordinary designer might not have recognized in the original disclosure.
In those certain limited situations, a question arises as to whether
the later-claimed design satisfies the written description requirement.
In the Notice, the USPTO requested input on its proposed factors-
based approach, in which design examiners would consider certain
enumerated factors when evaluating a claim for compliance with the
written description requirement. The Roundtable featured public
presentations and discussion of the topics identified in the Notice.
The USPTO also received written comments on the topics identified in
the Notice and discussed at the Roundtable. Details of the Roundtable,
as well as the public presentations, the USPTO's examples presented for
discussion, the webcast recording, and the written comments received
are available at http://www.uspto.gov/patent/contact-patents/roundtable-written-description-requirement-design-applications.
The USPTO considered all of the comments, both those expressed at
the Roundtable and those received in writing. Responsive to these
comments, the USPTO has decided not to pursue the factors-based
approach set forth in the Notice. Also, in view of the comments, it
became clear that there exists a need to supplement the current
provisions in the Manual of Patent Examining Procedure (``MPEP'')
relating to 35 U.S.C. 112 for design applications. A majority of the
comments urged that the USPTO focus on precedent from the U.S. Court of
Appeals for the Federal Circuit (``Federal Circuit'') pertaining to
written description issues in the context of design patents and
applications. Specific emphasis was placed on Racing Strollers Inc. v.
TRI Industries Inc., 878 F.2d 1418 (Fed. Cir. 1989) (en banc) and In re
Daniels, 144 F.3d 1452 (Fed. Cir. 1998). Most comments suggested that
these cases establish ``a simple visual test'' for determining
compliance with the written description requirement; that is, the
written description requirement is satisfied because the elements of
the later-claimed design are visible in the original disclosure.
Several comments also addressed In re Owens, 710 F.3d 1362 (Fed. Cir.
2013). In developing the proposed approach set forth in section III of
this notice, the USPTO considered these Federal Circuit design cases,
along with other seminal Federal Circuit cases concerning the written
description requirement.
II. General Principles Governing Compliance With the Written
Description Requirement for Design Applications
35 U.S.C. 112(a) provides that ``[t]he 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 . . .
.'' The Federal Circuit has explained that ``requiring a written
description of the invention plays a vital role in curtailing claims .
. . that have not been invented, and thus cannot be described.'' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc). Further, ``the purpose of the written description
requirement is to `ensure that the scope of the right to exclude, as
set forth in the claims, does not overreach the scope of the inventor's
contribution to the field of art as described in the patent
specification.' '' Id., 598 F.3d at 1353-54 (citations omitted).
In evaluating written description, ``the test for sufficiency is
whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of
the claimed subject matter as of the filing date.'' Id., 598 F.3d at
1351 (citations omitted). See also Daniels, 144 F.3d at 1456. With
respect to showing possession, the Federal Circuit has emphasized that
``the hallmark of written description is disclosure'' and ``[t]hus,
`possession as
[[Page 22235]]
shown in the disclosure' is a more complete formulation.'' Ariad, 598
F.3d at 1351. Accordingly, ``the test requires an objective inquiry
into the four corners of the specification from the perspective of a
person of ordinary skill in the art'' and ``[b]ased on that inquiry,
the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.'' Id.
The test for sufficiency of written description is the same for
design and utility patents. Daniels, 144 F.3d at 1456. For designs,
``[i]t is the drawings of the design patent that provide the
description of the invention.'' Id. (stating, ``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
Section 112.'').
In Racing Strollers, the Federal Circuit stated, ``[a]s a practical
matter, meeting the [written description] requirement of Sec. 112 is,
in the case of an ornamental design, simply a question of whether the
earlier application contains illustrations, whatever form they may
take, depicting the ornamental design illustrated in the later
application and claimed therein . . . .'' Racing Strollers, 878 F.2d at
1420. Subsequent cases explain that the written description analysis
must be conducted from the perspective of an ordinary designer. For
example, in finding that the inventor in Daniels had possession of a
later-claimed design to a leecher without leaf ornamentation where an
earlier design application depicted the leecher with leaf
ornamentation, the Federal Circuit stated, ``The leecher as an article
of manufacture is clearly visible in the earlier design application,
demonstrating to the artisan viewing that application that [the
inventor] had possession at that time of the later claimed design of
that article . . . .'' Daniels, 144 F.3d at 1456-57 (citations omitted)
(emphasis added).
This principle is articulated again in Owens, where the Federal
Circuit found that a parent application disclosing a design for a
bottle with an undivided pentagonal center-front panel did not provide
written description support for a continuation claiming only the
trapezoidal top portion of the center-front panel. Owens, 710 F.3d at
1368. Specifically, the Federal Circuit stated that ``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.'' Owens, 710 F.3d at 1368 (citing Ariad, 598
F.3d at 1351) (emphasis added). These design cases are consistent with
the written description case law requiring that the application relied
upon must reasonably convey to a person of skill in the art that the
inventor had possession of the claimed subject matter. See Ariad, 598
F.3d at 1351 (stating, ``the test requires an objective inquiry into
the four corners of the specification from the perspective of a person
of ordinary skill in the art'' and ``[b]ased on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention
claimed.'').
III. Applying the General Principles to Specific Situations in Design
Applications Where Issues of Compliance With the Written Description
Requirement May Arise
A question as to whether the original or earlier disclosure of a
design provides an adequate written description may arise when an
amended claim is presented, or where a claim to entitlement of an
earlier priority date or effective filing date (e.g., under 35 U.S.C.
120) has been made. A continuation application must comply with the
written description requirement to be entitled to a parent
application's effective filing date. See Owens, 710 F.3d at 1366
(citing Daniels, 144 F.3d at 1456). Similarly, an amended claim must
find written description support in the original disclosure. In
determining whether a claim complies with the written description
requirement, an examiner would bear in mind that ``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.' '' Owens, 710 F.3d at 1368 (quoting Ariad, 598 F.3d
at 1351) (alternations in original) (emphasis added).
Issues of compliance with the written description requirement may
arise where a later-claimed design is composed of only a subset of
originally disclosed elements (the later-claimed design does not
introduce any new elements that were not originally disclosed). In the
vast majority of such situations, the fact that the subset of
originally disclosed elements composing the later-claimed design is
visible (claimed or unclaimed) in the original/earlier application is
sufficient to demonstrate to the ordinary designer viewing the
original/earlier application that the inventor had possession of the
later-claimed design at the time of filing the original/earlier
application. See Racing Strollers, 878 F.2d at 1420 (stating ``[a]s a
practical matter, meeting the [written description] requirement of
Sec. 112 is, in the case of an ornamental design, simply a question of
whether the earlier application contains illustrations, whatever form
they may take, depicting the ornamental design illustrated in the later
application and claimed therein . . . .''); see also Daniels, 144 F.3d
at 1456 (stating ``when an issue of priority arises under Sec. 120 in
the context of design patent prosecution, one looks to the drawings of
the earlier application for disclosure of the subject matter claimed in
the later application'' and finding that ``[t]he leecher as an article
of manufacture is clearly visible in the earlier design application,
demonstrating to the artisan viewing that application that [the
inventor] had possession at that time of the later claimed design of
that article [alone without the leaf ornamentation claimed in the
earlier design application]''). In these situations, no further
analysis by the examiner would be necessary with respect to the written
description requirement.
However, as mentioned earlier, limited situations may exist where a
later-claimed design, composed of only a subset of originally disclosed
elements (claimed or unclaimed), raises a question as to whether the
later-claimed design is supported by the original/earlier disclosure,
even though the elements composing the later-claimed design are visible
in the original/earlier disclosure. An example of such limited
situations is the situation in which there is an original disclosure
composed of a grid of one hundred blocks (or a grid of several million
pixels) and a later-claimed design composed of only a subset of
interior blocks (or pixels) that form patterns (e.g., a smiling face or
a frowning face). In this situation, there is a question as to whether
the later-claimed design is supported by the original disclosure, even
though the interior blocks (or pixels) composing the patterns are
visible in the original disclosure. See also, ``AIPLA Comments to USPTO
on Written Description,'' March 14, 2014, at page 3, available at
http://www.uspto.gov/patents/law/comments/dr_a-aipla_20140314.pdf, for
a similar concept. In such limited situations, the examiner would
determine whether an ordinary designer would recognize upon reviewing
the complete original/earlier application that the inventor had
possession of the later-claimed design in the original/
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earlier disclosure. See Daniels, 144 F.3d at 1456 (stating, ``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.' '')
(citations omitted). See also Owens, 710 F.3d at 1368 (quoting Ariad,
598 F.3d at 1351).
When making this determination, the examiner would consider what
the original/earlier application, in its totality (e.g., including the
title, any descriptive statements, and the drawings), would have
reasonably conveyed to an ordinary designer at the time of the
invention, and how an ordinary designer in the art would have designed
the article that is the subject of the design claim. Such
considerations can include the nature and intended use of the article
embodying the claimed design as identified by the title or description
(see, e.g., MPEP Sec. 1503.01 I (9th ed. 2015)). If, based on these
considerations, the examiner determines that an ordinary designer would
not recognize upon reviewing the complete original/earlier application
the later-claimed design in the original/earlier disclosure, the
examiner would reject the claim for lack of written description (or in
the case of a priority or benefit claim, the application would not be
entitled to the earlier date).
Since the Office has the initial burden of establishing a prima
facie case of lack of written description, should an examiner determine
that a rejection is appropriate, the examiner must set forth express
findings of fact which support the lack of written description
determination (see MPEP Sec. 2163 for examination guidelines
pertaining to the written description requirement). Upon reply by
applicant, before rejecting the claim again under 35 U.S.C. 112(a) for
lack of written description, the examiner would need to review the
basis for the rejection in view of the record as a whole, including
amendments, arguments, and any evidence submitted by applicant, such as
affidavits or declarations.
If the record as a whole demonstrates that the written description
requirement is satisfied, the rejection would not be repeated in the
next Office action. If, on the other hand, the record does not
demonstrate that the written description is adequate to support the
claim, the examiner again would reject the claim under 35 U.S.C.
112(a), fully respond to applicant's rebuttal arguments, and properly
treat any further showings submitted by applicant in the reply. When
rejecting the claim again for lack of written description, the examiner
would need to thoroughly analyze and discuss any affidavits or
declarations filed by applicant that are relevant to the 35 U.S.C.
112(a) written description requirement. See In re Alton, 76 F.3d 1168,
1176 (Fed. Cir. 1996).
IV. Request for Public Comments
The USPTO is requesting written public comments on the USPTO's
proposed approach for applying the written description requirement in
design applications as discussed in this notice. Because the USPTO is
considering providing examples after reviewing public comments on the
proposed approach, the USPTO also is requesting specific examples that
the public believes would be helpful to illustrate the proposed
approach or any suggested approach for applying the written description
requirement in design applications. In particular, the USPTO is seeking
examples from the public that demonstrate adequate written description
as well as examples that demonstrate a lack of written description.
Additionally, examples of situations in which the presence or lack of
written description is not readily apparent, i.e., examples that are
close to the line between adequate written description and insufficient
written description, would be most helpful. Once the USPTO has
considered the comments and examples received, the USPTO will determine
how best to proceed in view of the public feedback on the proposed
approach for applying the written description requirement in design
applications.
Dated: April 8, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-08760 Filed 4-14-16; 8:45 am]
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