[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]
 BILLING CODE 3510-16-P