Making Drawing Amendments to US Design Patentsadmin
A couple of recent cases that came before the US Patent Trial and Appeal Board (PTAB) provide important guidance on how to create drawings in the application stage that will be easier to modify later if needed.
While drawings are essential for almost any patent, they are of special significance for design patents, where the drawing IS the disclosure. As hard as the inventor, patent attorney, and illustrator work to get the drawings perfect in the initial application, there will be situations where a drawing needs to be amended. Two recent cases show us what the PTAB will and will not allow when making amendments to drawings in design patents.
In the first case, Vittorio Bologna et. al., the PTAB upheld the examiner’s decision to reject the design claim for lack of written description in the originally filed application.
The original drawing is a drawing of a helmet with almost all of the lines shown as solid lines, showing they are part of the claim, and only small areas shown with broken lines, indicating those sections are NOT part of the claim.
The applicant filed a first revision and then a second revision. The PTAB ruled that the first and second revisions were essentially the same, so it didn’t matter which ones they ruled on. They ruled on the second set, shown here:
You can see from comparing the two, that the replacement figures have a lot more broken lines. Instead of claiming the design of the entire helmet, they have made it MUCH broader and are only claiming the design of the vent openings. In the first case, the requested patent is for the design of a helmet. In the second case it’s for the design of the vent holes, regardless of the design of the rest of the helmet. The examiner ruled, and the PTAB confirmed, that the replacement figures “introduce new matter not supported by the original disclosure.” The examiner pointed out that the new shading defines a boundary edge where none previously existed – therefore it’s adding something new to the claim, which is not allowed.
In the second case, Ex parte Danielle Giza, the PTAB overruled the examiner’s rejection. This is regarding the design of an icon for a display screen shown below. As you can see, in the original drawing all the lines are solid. In the revised drawing the top line is changed to a broken line. The examiner rejected it, saying that, “a design that does not include the top portion of the large chevron feature, now shown in broken lines in every embodiment of the claimed design, was not originally described.”
The PTAB overruled the rejection. The PTAB ruled that the change in this case did NOT alter the nature of the claimed design. The ruling says, “Appellant has converted an entire existing length of certain solid lines to dashed lines in a manner that is both disclosed and described, and without defining any new boundaries. For this reason, we do not sustain the claim rejection.”
The Federal Circuit has ruled in the past AGAINST the idea that a design is a “unitary thing” such that any changes render it a different design. You can, under certain circumstances, change solid lines to broken lines, seemingly broadening what’s claimed, as long as the original design drawing would have made clear to someone “skilled in the art” what it is that was being ultimately claimed. In Giza, what’s being claimed between the original and revised drawings is substantially the same. In Bologna, the second set of drawings seems to be claiming something rather different than what was claimed in the first set.
The message is clear: you want to make sure in your original drawing submission that you are claiming the design elements that are important to you. You can’t add something new or make such a big change that the original drawings no longer reflect what it is that you’re seeking to protect. If you need any help with patent drawings, whether for an initial application or for a revision, please contact us, we’re happy to help.