Written Description as a Subset of Novelty and Nonobviousness

by Dennis Crouch

Zahner Design Group v. Vidal (Supreme Court 2022)

D746,078 (Patent being litigated)

Zahner’s Design Pat. D746,078 covers the ornamental design of a shower curtain as shown in the figures above.  Zahner sued Katri Sales for infringement, and the defendant turned-around and filed a request for ex parte reexamination. The examiner found some great prior art from 2013, which predates this particular design application filing date. But, the design patent also claimed priority to Zahner’s prior utility patent application (Serial No. 09/617,402) that predates the reference. The utility application includes a number of drawings that are similar-to, but not exactly the same as those in the Design Patent. (Images below).

The basic question in the case then was whether the priority drawings provide sufficient written description support for the eventual design as claimed.

09/617,402 (Priority filing)

The PTAB found the design claim was not sufficiently supported by the priority disclosure and so the priority claim was invalid.  And, without the priority claim, the invention had become obvious by the time of the later actual filing date. The basic problem, can be seen in the design patent’s perspective view shown below.   The perspective shows that the inner surface of the aperture is flat and with right-angled edges.  According to the PTAB, those features are new to the design patent and not disclosed by Figure 21 of the priority filing.  On appeal, the Federal Circuit affirmed without opinion.

Close-up of the Design Patent drawing

Zahner disagrees with the merits of the decision here, but has also suggested that it will raise procedural challenges in an upcoming petition for writ of certiorari.  In particular, Zahner intents to raise the same question that Arthrex will likely raise, although this time in the reexamination context:

Question: Does the Reexamination Statute permit a challenge to priority claims?

Zahner has also argued that its situation is particularly egregious because the priority question was particularly addressed by the examiner during the original prosecution.  That is important because reexaminations are limited to “new” questions of patentability.

After receiving the R.36 no-opinion affirmance, Zahner filed a petition for panel rehearing that included the following line: “A written opinion on this issue is respectfully requested.”  The Federal Circuit though denied the petition without opinion.   This situation thus raises the issue I addressed in my 2017 paper titled Wrongly Affirmed without Opinion. In that paper, I argue that these no-opinion judgments are contrary to the statutory requirement of Section 144 requiring the court to issue an opinion in appeals from the PTO. Although this argument has been raised in dozens of cases, the court has not yet responded to the argument, and the peculiar procedural setup allows this status quo.  In a recent request for extension of time, Zahner indicated to the Supreme Court that it also plans to raise the no-opinion question.

I mentioned Arthrex above, its petition to the Supreme Court will be due in November 2022.  In its failed petition for rehearing on the IPR-priority issue, Arthrex asked the following question:

Whether 35 U.S.C. § 311(b)’s restriction “only on a ground that could be raised under section 102 or 103” permits IPR challenges that depend solely on compliance with the written description requirement of section 112.

Arthrex en banc rehearing petition.

27 thoughts on “Written Description as a Subset of Novelty and Nonobviousness

    1. 7.1

      I too was wondering. Actually, I think we know “what” happened but don’t know “why”. Something in it embarrassing for Dennis, perhaps? But if so, what?

      1. 7.1.1

        “Professionally embarrassed” was the thought that occurred to me.

        I wasn’t going to dwell on it, but did want to remind the good Professor as to WHY that change in 102 occurred in 2011 (it was an express note by Congress to simplify elements of prior art in relation to anticipation and obviousness — with clearly no impact to the point that he was wondering about).

  1. 6

    “ According to the PTAB, those features are new to the design patent”

    Funny stuff. There is zero support for the features and suggesting otherwise should lead to harsh sanctions. In other contexts, it’s call “lying one’s -ss off”.

    It’s just disgusting behavior that is compounded by the failure of other so-called “attorneys” to simply recognize it for what it is.

  2. 5

    Exhibit number 90,354 supporting the shutting down the entire design patent “system” in the US and starting over with a blank slate. That this was ever filed in the first place is beyond absurd.

  3. 4

    Re: This being an “ex parte reexamination [in which] “the examiner found some great prior art” re this design patent.
    I would attribute that to the wise decision of the PTO some years ago to set up a special examining group to handle reexaminations and reissues of issued patents.

    1. 4.1

      The PTO’s name for that special examination unit is “the Central Reexamination Unit (CRU).” Besides handling reexaminations and Reissue applications it also apparently handles the [rarely ever used] AIA Supplemental Examination system set up to dispose of inequitable conduct allegations of withheld prior art materiality.

  4. 3

    Does everyone here realize that if either Zahner Design Group or Arthrex is successful in getting both cert granted and a reversal [highly unlikely*] that this will expand IPR attacks on patents, because patent owners would no longer be able to challenge the effective prior art date of petitioner-cited patents. [And perhaps even publications?]
    *They are misleadingly arguing that 112 is a forbidden new IPR ground, but here 112 is not being asserted against the patent owners original patent claims, only being raised by a patent owner as a defense against the prior art date of a patent asserted as prior art against the patent under attack.

    1. 2.1

      Did they mention what that means in terms of net gain? In other words, 624 were onboarded, but X left. Is that a net gain or a net loss, do you happen to know?


          Thanks. So not the RIF that NW has been predicting for many years, but still a net decline from natural attrition.


            Yes, though it is unclear whether or not the decline is deliberate. We don’t know the PTO’s targets.


              “We don’t know the PTO’s targets.”

              It used to be like 3% attrition was the target iirc. Not sure why they would up that, as keeping primaries is the money maker for them. The only people that they maybe possibly would want to attrite are people not going up towards primary and in general I’ve never heard anyone say they’re trying to get rid of those examiners either (they have 200k+ of trainings etc. sunk in them and a lot of experience).


          Wait did you mean they’re down total, as in net, 66 examiners even with all the newly onboarded people?


              Oh dear lord, in that case, we literally saw like 7-10% attrition (I think), so the numbers were large.


                What would be the historical churn rate…?

                By the way, I lost three examiners that had been repeat examiners on my cases — each jumped back into the private technical world.

                1. I’d imagine that examiners would be reluctant to leave the relative job security of the USPTO at this point in time. The vast majority of examiners I knew/know love the job security and benefits. I only left the USPTO because I already had my law degree and law school loans to pay off.

                2. Thanks ipguy – and normally I would tend to agree with you, but as it turns out each of these were not “bureaucrats at heart” and had received good offers to do real technical work.

                  I was happy for them – and sad for my client, as we had built up a healthy rapport.

                3. “What would be the historical churn rate…?”

                  Around 3 iirc.

                  “each jumped back into the private technical world.”

                  I don’t doubt it. I have myself been approached quite a bit this year, still nobody offering enough to drag me away. I guess if you wanted to jump ship tho there’s plenty of opportunities to just make lateral.

    1. 1.2

      None of it is ornamental. This “patent” is pure unadulterated junk and everyone involved should be ashamed of themselves.

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