In Re FLOYD

• Court: Court of Appeals for the Federal Circuit
• Decided: April 22, 2025
• Docket: 23-2395
• Status: Unpublished

Opinion

Case: 23-2395 Document: 40 Page: 1 Filed: 04/22/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IN RE: BONNIE IRIS MCDONALD FLOYD, Appellant ______________________

2023-2395 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 29/685,345. ______________________

Decided: April 22, 2025 ______________________

MICHAEL DREW, Michael Drew Attorney at Law, Stone Mountain, GA, argued for appellant.

BRIAN RACILLA, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Coke Morgan Stewart. Also represented by WILLIAM LAMARCA, AMY J. NELSON, FARHEENA YASMEEN RASHEED. ______________________

Before PROST, LINN, and STOLL, Circuit Judges. LINN, Circuit Judge. Applicant Bonnie Iris McDonald Floyd (“Floyd”) ap- peals the decision of the Patent Trial and Appeal Board (“Board”) affirming a final office action that denied Floyd’s Case: 23-2395 Document: 40 Page: 2 Filed: 04/22/2025

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design application’s claim of priority to her previously filed utility application and rejected her design claim as antici- pated by her utility application. For the reasons that fol- low, we affirm. BACKGROUND I On January 23, 2016, Floyd filed a utility application, Application No. 15/004,938 (the “’938 application”), di- rected to a cooling blanket featuring “an integrated venti- lation system” and “multiple, sealed compartments.” Figures 1 and 1A of the ’938 application depict embodi- ments of the inventive cooling blanket featuring six-by-six and six-by-four arrays, respectively:

’938 application Figures 1 &1A. The utility application discloses: “the embodiment can be made in any size suitable for cooling the body core, or entire body of any human or animal.” Id. at ¶ 25. The ap- plication also states that “[w]hile [the] description contains Case: 23-2395 Document: 40 Page: 3 Filed: 04/22/2025

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many specifications, these should not be construed as lim- itations on the scope, but rather as an exemplification of several embodiments. Many other variations are possible.” Id. at ¶ 27. On March 27, 2019, Floyd filed U.S. Design Patent Ap- plication No. 29/685,345 (the “’345 application”), claiming priority to the ’938 application. Specifically, the ’345 appli- cation claims “[t]he ornamental design for a Cooling Blan- ket for Humans and Animals, as shown and described.” J. App’x 22. Figure 1 of the ’345 application is depicted be- low:

J. App’x 23. II During prosecution, the Examiner determined that the design claimed in the ’345 application could not claim the benefit of the ’938 application’s priority date because the claimed design includes new matter and the change in the blanket’s number of compartments was not expressly shown in the ’938 application. Thus, the Examiner con- cluded that the ’938 application qualified as prior art and anticipated the claimed design. Case: 23-2395 Document: 40 Page: 4 Filed: 04/22/2025

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The Board affirmed the Examiner’s § 102 rejection. Specifically, the Board concluded that “nothing in the ’938 application leads to the precise visual appearance repre- sented in the [six-by-five] array configuration claimed here.” J. App’x 6. While the Board acknowledged that the ’938 application indicates that “the embodiment can be made in any size,” the Board concluded that this “could mean that the rectangular sections are of a different size, as opposed to the blanket having a different number of rec- tangular sections.” Id. Further, the Board found that “the drawings of the [six-by-six] and [six-by-four] array configu- rations are not sufficient to narrow down [the numerous potential design] options to a specific visual impression of a blanket of any other configuration than those explicitly shown.” Id. Thus, the Board concluded that the design claimed in the ’345 application did not benefit from the ’938 application’s priority date. Id. Applying the ordinary observer test for anticipation, the Board affirmed the Ex- aminer’s finding that the ’938 application anticipated the design claimed in the ’345 application. J. App’x 7. Floyd only challenges the Board’s priority analysis and, specifically, its finding that her prior filed utility applica- tion does not provide written description support for her claimed design. J. App’x 10–11. Floyd “admits that if the claimed design . . . is found not to be entitled to the filing date of Appellant’s earlier ’938 application, then the claimed design . . . would be anticipated” by the same ’938 application that does not provide written description sup- port. 1

1 The Board addressed Floyd’s argument that find- ing the prior filed utility application fails to provide written description support and yet anticipates the claimed design is “grossly inconsistent.” J. App’x 7. The Board rejected Case: 23-2395 Document: 40 Page: 5 Filed: 04/22/2025

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We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). ANALYSIS I We review the Board’s legal conclusions de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and its fact- finding for substantial evidence.2 In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). On substantial evidence re- view, we ask whether a reasonable fact finder could have arrived at the agency’s decision. RAI Strategic Holdings, Inc. v. Philip Morris, S.A., 92 F.4th 1085, 1092 (Fed. Cir. 2024). Where the record supports multiple reasonable con- clusions, we will not find the Board’s decision unsupported

this argument, explaining that “the standard for evaluat- ing whether a claim obtains the benefit of an earlier filing date is different than the standard for evaluating anticipa- tion.” Id. We need not address this issue because Floyd agrees that, if the claimed design lacks written description support, it would be anticipated. 2 Floyd cites Vas-Cath v. Mahurkar for the proposi- tion that factual questions are reviewed under the clearly erroneous standard. Appellant’s Opening Br. 13–14 (citing 935 F.2d 1555, 1563 (Fed. Cir. 1991)). While we continue to apply that standard in appeals from bench trials in the district courts, see, e.g., Forest Lab’ys, LLC v. Sigmapharm Lab’ys, LLC, 918 F.3d 928, 934 (Fed. Cir. 2019), the Su- preme Court concluded in Dickinson v. Zurko that this Court’s review of Patent Office factfinding under this standard did not comport with the Administrative Proce- dure Act (“APA”). 527 U.S. 150, 155–56 (1999) (rejecting the application of the court/court standard of review to Pa- tent Office factfinding). We have since applied the APA’s substantial evidence standard when reviewing the Patent Office’s factual determinations. In re Gartside, 203 F.3d at 1316; 5 U.S.C. § 706. Case: 23-2395 Document: 40 Page: 6 Filed: 04/22/2025

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by substantial evidence simply because the Board chose one conclusion over a plausible alternative. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002). The written description inquiry is a question of fact, RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024), as is whether a pa- tented design is functional or ornamental. PHG Techs., LLC v. St. John Co., Inc., 469 F.3d 1361, 1365 (Fed. Cir. 2006). II An invention described in an earlier filed application in accordance with § 112(a) will benefit from the filing date of the earlier application. 35 U.S.C. § 120. We have held that § 112(a) requires a written description of the invention. Ar- iad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc). When determining whether written description support exists, we apply the same test to both design and utility applications, asking “whether the disclosure of the application relied upon reasonably con- veys to those skilled in the art that the inventor had pos- session of the claimed subject matter as of the filing date.” In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (internal quotations omitted). Floyd argues that the Board erroneously concluded that the ’938 application does not provide written descrip- tion support for the claimed design because: (1) the ’938 application’s disclosure is not limited to the embodiments depicted in the figures, (2) a skilled artisan would recog- nize that Floyd possessed the six-by-five array configura- tion based on her disclosure of arrays that “lie in adjacent size juxtaposition,” J. App’x 20–21, (3) the claimed design is inherent in the ’938 application’s disclosure, (4) the pre- cise number of compartments is a functional, rather than ornamental, feature that does not limit the claimed design, and (5) the Board relied on an erroneous interpretation of §§ 112, 120, and 171. We address each argument in turn. Case: 23-2395 Document: 40 Page: 7 Filed: 04/22/2025

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A Floyd first contends that the Board erred by limiting the ’938 application’s disclosure to the embodiments de- picted in the figures. She contends that her design more broadly pertains to “a pattern comprising rectangular ob- jects set off by cross-hatching of apertured narrow chan- nels.” Appellant’s Opening Br. 12. The ’938 application uses language that, Floyd argues, shows that the specifica- tion does not limit the design to just the embodiments de- picted in Figures 1 and 1A. Id. at 18–19; see also J. App’x 41 (noting that the claimed blanket “can be made in any size for cooling the body core, or entire body, of any human or animal.”). The Patent Office argues that the drawings of Floyd’s utility application may provide written description support for a later filed design but that “[u]ndepicted designs that happen to fall within the scope of broad language in the specification . . . do not allow skilled artisans to recognize that the inventor invented the design.” Appellee’s Br. 23– 24. The Patent Office also contends that the broad lan- guage of the ’938 application does not evince Floyd’s pos- session of the specific six-by-five design claimed in the ’345 application. The key question for written description is whether a skilled artisan would recognize that Floyd, at the time the ’938 application was filed, possessed the particular design claimed in the ’345 application. The Board concluded that “nothing in the ’938 application leads to the precise visual appearance represented in the [six-by-five] array configu- ration claimed here.” J. App’x 6. The Board reasonably in- terpreted the specification’s statement that the invention “can be made in any size” as indicating that the rectangular sections can vary in size rather than that the blanket may feature additional compartments and seams. J. App’x 6. While Floyd argues that the specification includes “expan- sive language” and that “[m]any other variations [of the Case: 23-2395 Document: 40 Page: 8 Filed: 04/22/2025

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invention] are possible,” the Board could reasonably read the statements in the specification as merely generalizing away from the depicted embodiments without providing the details needed to show possession of the six-by-five de- sign. This suffices under substantial evidence review. See In re Jolley, 308 F.3d 1317, 1320 (“[W]e will not find the Board’s decision unsupported by substantial evidence simply because the Board chose one conclusion over an- other plausible alternative.”). Thus, the Board recognized and gave effect to the broader language in the ’938 applica- tion but concluded that such language failed to show pos- session of the specific design that Floyd now claims. We, therefore, reject Floyd’s argument that the Board improp- erly limited the disclosure of the ’938 application to the em- bodiments depicted in the drawings. B Floyd also contends that the “the ’938 application clearly conveys that [she] was in possession of the [claimed design],” in part, because ’938 application discloses six-by- six and six-by-four arrays that “lie in adjacent size juxta- position” with the six-by-five array. Appellant’s Opening Br. 20–21 (citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (noting that, to satisfy the written description requirement, “a prior application need not contain precisely the same words as are found in the asserted claims”)). Because of the predictability of the field and the simplicity of the invention, Floyd argues, less detail is needed to provide written description support for the claimed design and, thus, a skilled artisan would rec- ognize from her disclosure of the six-by-six and six-by-four arrays that she also possessed the six-by-five array config- uration. Appellant’s Reply Br. 8–9 (citing RAI, 92 F.4th at 1090). The Patent Office argues that the ’938 application does not disclose a range of arrays at all but, instead, discloses two standalone embodiments of the invention. Case: 23-2395 Document: 40 Page: 9 Filed: 04/22/2025

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Alternatively, if the ’938 application discloses a range of ar- ray configurations, the Patent Office argues, Floyd still cannot prevail because “[t]he disclosure of a broad range of values does not by itself provide written description sup- port for a particular value within that range.” Appellee’s Br. 26 (quoting Gen. Hosp. Corp. v. Sienna Biopharms., Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018)). Although the technology in the utility application is simple and perhaps predictable, this does not eliminate the need to provide written description support for the design within the four corners of the specification. The predicta- bility of the technology embodied in the utility application does not necessarily carry over into the predictability of the designs, which are not limited to their utilitarian function- ality, and which may range from the straightforward to the ornate. Accordingly, Floyd’s contention that the technology of the article embodying the claimed design is simple does not suffice to show that the Board’s written description de- termination lacks substantial evidence support. Moreover, substantial evidence supports the Board’s determination that the ’938 application’s figures do not support any designs other than those they depict. First, Floyd fails to identify anything in the ’938 application dis- closing a range of possible arrays rather than the distinct examples depicted in the figures. Second, Figure 1 and Fig- ure 1A differ not only in the number of rows and columns each depicts, but also in the shape of their compartments. As the Board found, Figure 1 shows an array of rectangular segments whereas Figure 1A depicts an array of square segments. J. App’x 5. Because the figures show embodi- ments that differ in multiple ways, not just in the array configurations they embody, the ’938 application reasona- bly supports the view that the figures, rather than defining a range, depict distinct embodiments. Thus, we conclude that substantial evidence supports the Board’s finding that “the drawings of the [six-by-six] and [six-by-four] array configurations are not sufficient to narrow down [the Case: 23-2395 Document: 40 Page: 10 Filed: 04/22/2025

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numerous potential design] options to a specific visual im- pression of a blanket of any other configuration other than those explicitly shown.” J. App’x 6. While Floyd is correct that in haec verba support is not necessary to satisfy the written description requirement, she must still show that a skilled artisan would recognize that she possessed the claimed design based on the ’938 application’s disclosure. Because the figures of the ’938 ap- plication do not define endpoints of a range that might sug- gest Floyd’s contemplation of intervening designs, we conclude that their similarity to the claimed design does not suffice to overcome the Board’s finding of no written description support. See Ariad, 598 F.3d at 1352 (“[A] de- scription that merely renders obvious the invention does not satisfy the requirement.”); see also Vas-Cath, 935 F.2d at 1562 (noting that a description that suffices to anticipate does not necessarily satisfy the written description require- ment). Thus, we reject Floyd’s argument that her disclo- sure of arrays in “adjacent size juxtaposition” with the claimed design shows the Board erred in finding no written description support. C Floyd next asserts that because the ’938 application discloses arrays that feature a plurality of individualized compartments, the claimed six-by-five array design is in- herently disclosed. Appellant’s Opening Br. 21 (citing PowerOasis, 522 F.3d at 1306 (noting that written descrip- tion support requires that “the written description actually or inherently disclose the claim element”)); see also Appel- lant’s Opening Br. 20 (quoting Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The claims as filed are part of the specification, and may provide or contribute to compli- ance with § 112.”)); ’938 application claim 1 (reciting “indi- vidualized compartments in plurality”). The Patent Office contends that the ’938 application’s disclosure of arrays having a plurality of “individualized Case: 23-2395 Document: 40 Page: 11 Filed: 04/22/2025

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compartments” does not fall within the narrow set of cir- cumstances where the written description requirement may be satisfied by an inherent disclosure because, while a skilled artisan implementing the ’938 application’s inven- tion may possibly select a design having a six-by-five array, there is nothing in the specification of the ’938 application to suggest that a skilled designer would necessarily do so. Substantial evidence supports the Board’s view. The ’938 application’s disclosure of two specific arrays of indi- vidualized compartments provides no basis on which to conclude that a skilled artisan would necessarily recognize that she possessed the different claimed six-by-five design. See PowerOasis, 522 F.3d at 1306 (noting that “to satisfy the written description requirement, the missing descrip- tive matter must necessarily be present in the [original] application’s specification” (insertion in original and inter- nal quotations omitted)); see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (noting that a disclosure that satisfies the written description require- ment must describe the claimed invention—“with all its claimed limitations”—“in sufficient detail that one skilled in the art can clearly conclude that the inventor [possessed what is claimed]”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328 (Fed. Cir. 2000) (rejecting the view that “the written description requirement was satisfied be- cause the disclosure revealed a broad invention from which the claims carved out a patentable portion”). While Floyd is correct that a specification may provide written descrip- tion support for limitations that are inherently, but not ex- pressly, disclosed, she has failed to show that such is the case here. D Floyd next argues that the number of individualized compartments is a functional, rather than ornamental, el- ement “related to providing a blanket of sufficient size to address a proposed use.” Appellant’s Opening Br. 22. Case: 23-2395 Document: 40 Page: 12 Filed: 04/22/2025

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The Patent Office argues that this argument is for- feited because Floyd never presented it to the Board. On the merits, the Patent Office contends that the number of compartments in the claimed cooling blanket is not dic- tated by its function. Failure to raise arguments before the tribunal under review results in forfeiture. See, e.g., In re Google Tech. Holdings LLC, 980 F.3d 858, 864 (Fed. Cir. 2020) (“We have regularly stated and applied the important principle that a position not presented in the tribunal under review will not be considered on appeal in the absence of excep- tional circumstances.”). Floyd forfeited her functionality argument by failing to raise it before the Board. Reaching the merits would not lead us to a different conclusion, how- ever, as Floyd’s argument calls for us to ignore findings of fact supported by substantial evidence. A design is func- tional when its appearance is dictated by primarily func- tional considerations. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.3d 1117, 1123 (Fed. Cir. 1993). Here, that would mean that the number of compartments would be dictated by the functional consideration of providing a blanket of sufficient size for a particular use. But the Board con- cluded that “the statement about ‘any size’ could mean that the rectangular sections are of a different size, as opposed to the blanket having a different number of rectangular sections.” J. App’x 6. As we explained above, this finding is supported by substantial evidence. Therefore, Floyd has not shown that the blanket’s functionality dictates the number of compartments. E Finally, Floyd argues that the Board applied an erro- neous interpretation of 35 U.S.C. §§ 112, 120, and 171 and 37 C.F.R. § 1.153(a), contending that “[t]he Board appears to want to impart a requirement of some sort of threshold of creativity for an ornamental design beyond what patent law requires.” Appellant’s Reply Br. 11–12. The thrust of Case: 23-2395 Document: 40 Page: 13 Filed: 04/22/2025

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her argument, however, is nothing more than her disagree- ment with the Board’s application of this Court’s case law interpreting and applying the requirements of § 112. See Appellant’s Reply Br. 12 (contending that the claimed de- sign and the figures of the ’938 application “are harmoni- ous and consistent with one another”). For the reasons laid out in the foregoing analysis, we disagree with Floyd that the Board erred in concluding that the claimed design lacks written description support in the ’938 application. CONCLUSION We have considered Floyd’s other arguments but do not find them persuasive. For the foregoing reasons, we affirm the Board’s holding that the disclosure of the ’938 applica- tion does not provide written description support for the design claimed in the ’345 application. Because Floyd’s de- sign patent cannot claim priority to the ’938 utility appli- cation, we affirm the Board’s anticipation holding. AFFIRMED COSTS Each party shall bear its own costs.