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<P>BRIEF BY AMICUS CURIAE FOR REVERSAL OF THE JUDGMENT UNDER REVIEW </P>
<P>IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT Appeal
97-1225 Serial No. 29/020,787 </P>
<P>IN RE SCOTT J. DANIELS</P>
<P>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</P>
<P>Amicus Curiae</P>
<P>August 11, 1997 </P>
<P>STATEMENT OF ISSUES</P>
<P>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?</P>
<P>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?
</P>
<P>STATEMENT OF THE CASE</P>
<P>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.</P>
<P>SUMMARY OF ARGUMENT</P>
<P>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.</P>
<P>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.</P>
<P>ARGUMENT</P>
<P>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).</P>
<P>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.</P>
<P>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.</P>
<P>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, .... </P>
<P>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). </P>
<P>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.</P>
<P>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). </P>
<P>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).</P>
<P>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.</P>
<P>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. </P>
<P>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.</P>
<P>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.</P>
<P>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.</P>
<P>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, </P>
<P>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. </P>
<P>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.</P>
<P>CONCLUSION</P>
<P>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.</P>
<P>ORAL ARGUMENT</P>
<P>If the Court requests, the author of this brief will be willing to participate
in oral argument on this case.</P>
<P>William T. Fryer, III</P>
<P>-------------------------------------------------------------------------------------------------------------
Comments on this brief and the issues related to this case are welcomed.
All comments should be sent to the editor at the following e-mail address:
[email protected] --.</P>
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