When can portions of a solid line be converted to broken lines?

The prosecution history of USD1,012,864 (Portion of A Plastic Deep Electrical Junction Box) serves as a a reminder of when portions of a solid line can be converted to broken lines and when they cannot under In re Owens, 710 F.3d 1362 (Fed. Cir. 2013). In App, 29/711,198, Figs. 5 and 6 originally were filed as:

            In response to a restriction requirement, the applicant elected Group I (Figs. 1-6) for exmination without traverse and also amended Figs. 5 and 6 as follows:

            Enlarged views of portions of Figs. 5 and 6 show the applicant converted certain portions of the solid lines to broken lines, for example:

Fig. 5 (solid line converted to broken line beginning at point of arrow)

Fig. 6 (solid line converted to broken lines at points of arrows

            The examiner rejected Fig. 5 under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the point where the solid line was converted to broken line could not have been recognized in the original design. In contrast, the conversion to broken lines in Fig. 6 was proper because there were natural boundaries at the two points where the rim became recessed.

Rules of Law:

“When a boundary line is introduced via amendment or in a continuation application, the introduction of the boundary line must comply with the written description requirement of 35 U.S.C. 112(a). See In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013). For example, unclaimed boundary lines should satisfy the written description requirement where they make explicit a boundary that already exists, but was unclaimed in the original disclosure. See In re Owens, 710 F.3d at 1368-69, 106 USPQ2d at 1252.” DPP App. 29/711,198, page 64.

“When, by amendment of the parent, applicant broadens a design claim by designating less than the entire article for the design to occupy, there is a hazard of creating a new design. New boundaries are selected, and other boundaries are excluded from the selection. When the design resulting from this process could not have been recognized in the original design, at the time it was filed, to the exclusion of other designs, then the resulting design is new relative to the original one. An objective standard for determining compliance with the written description requirement is, ‘does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.’ In re Gosteli, 872 F.2d, 1012, 1 0USPQ2d 1614, 1618 (Fed. Cir. 1989). Vas-Cath, Inc v Mahirjar, 935 F.2d 1555, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991) states, ‘Adequate description of the invention guards against the inventor’s overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’”

Discussion:

A typical reason to amend drawings during the prosecution process is to broaden the coverage of the resulting design patent. It is not permissible to add or remove lines, but it is permissible to convert solid lines to broken lines. However, when doing a conversion, the end points where the solid lines are converted to broken lines must not be arbitrary. Rather, they must have some preexisting basis in the original disclosure filed. It is permissible to convert an entire straight line to broken line or to convert an entire circle to broken line. However, when it comes to converting just portions of solid lines, the transition point must have existed as either an express or implied boundary such as a change from straight to curved or a change in radius. Note finally that if prior art is not a problem, an applicant may change solid lines to broken lines in an arbitrary manner by redesignating the application to a continuation-in-part.