by Dennis Crouch
While a design patent can technically claim priority to a prior utility patent, that approach takes some planning and forethought to ensure that the utility patent’s drawings and disclosure sufficiently show possession of the specific ornamental design features that will later be claimed in the design application. Ideally, the drawings in the utility filing would be identical to those later included in the design application.
This situation is exemplified by the Federal Circuit’s recent decision In re Floyd (Fed. Cir. April 22, 2025) (non-precedential). The claimed design is a cooling blanket — with the drawings showing a 6×5 array pattern. The priority filing included a 6×6 array, a 6×4 array, and a statement that the array could include a plurality of array layouts. But, the priority filing did not specifically and expressly include the 6×5. The result: priority claim denied for lack of written description.
The case also illustrates the “daylight” between written description and anticipation standards, creating a trap where an applicant’s own published application can both fail to provide written description support yet anticipate a later filing. In this case, although Floyd’s prior published application was insufficient as a priority document, the court found it served perfectly well as an anticipatory reference.
Bonnie Iris McDonald Floyd originally filed a provisional application in 2015, followed by a non-provisional utility application (No. 15/004,938) in 2016. The application covers a a cooling blanket featuring “an integrated ventilation system” and “multiple, sealed compartments.” You can see a version above that is designed to provide emergency cooling for humans and animals — that permitted sweat evaporation through ventilation openings and radiant heat exchange with the frozen compartments.
The utility application (images shown above) was was published in 2017, but was ultimately after receiving §102 and §103 rejections.
Just before abandonment, Floyd filed a design patent application (No. 29/685,345) for “[t]he ornamental design for a Cooling Blanket for Humans and Animals, as shown and described.” This design application drawings now showed a 6×5 array configuration and sought priority back to her 2016 utility application which had become potential self-harming prior art based upon its 2017 publication.
The Dual-Edged Priority Dispute
The USPTO examiner rejected the design application following classic patent law logic:
- It couldn’t claim priority to the utility application because the 6×5 array configuration represented new matter not disclosed in the original filing; and
- Without priority, the design was anticipated by Floyd’s own published utility application.
The PTAB affirmed the examiner’s decision, finding that “nothing in the ‘938 application leads to the precise visual appearance represented in the [six-by-five] array configuration claimed here.” This created the paradoxical situation—emphasized during oral arguments—where the utility application both failed to provide written description support yet simultaneously anticipated the design.
The two designs are substantially the same for purposes of the ordinary observer test, yet there’s nothing to suggest that there’s a similar visual impression for purposes of the written description test. That seems to be somewhat contradictory.
But, the USPTO found no difficulty with this situation since “the disclosure to meet a 112 written description analysis and the disclosure to meet an anticipation analysis are different.”
In affirming the Board’s decision, the Federal Circuit emphasized that the central question in a written description analysis is whether a skilled artisan would recognize that the inventor possessed the particular design claimed in the later application. Writing for the court, Judge Linn held that substantial evidence supported the Board’s finding that “nothing in the ‘938 application leads to the precise visual appearance represented in the [six-by-five] array configuration claimed here.” The court reasoned that while Floyd’s utility application disclosed both six-by-six and six-by-four arrays, along with statements that the invention “can be made in any size,” these disclosures did not adequately demonstrate possession of the specific six-by-five array design later claimed.
The Federal Circuit rejected Floyd’s argument that her six-by-five array design was inherently disclosed in the utility application’s description of “individualized compartments in plurality.” The court noted that an inherent disclosure must be one that would “necessarily” be recognized by a skilled artisan, and found that the mere disclosure of two specific arrays provided “no basis on which to conclude that a skilled artisan would necessarily recognize that she possessed the different claimed six-by-five design.” The court also dismissed Floyd’s contention that the number of compartments was merely a functional rather than ornamental feature, finding this argument was forfeited by not raising it before the Board.
Importantly, the Federal Circuit found no inconsistency in the Board’s conclusion that Floyd’s utility application both failed to provide written description support yet simultaneously anticipated her design. The court explained that the standards for these analyses differ, and affirmed that once priority is denied, the previously published utility application becomes prior art that can be used to reject the design application under § 102. This case highlights the critical importance for inventors of ensuring that utility applications intended to support future design applications contain detailed drawings and descriptions that explicitly show the specific ornamental features they may later wish to claim.
On remand, it is possible that the applicant could amend its application to include those originally in the prior specification — the ability to do that may depend upon how the design application was filed (the application is not public).
- Mind the Gap Between Written Description and Anticipation: The case illustrates the “daylight” between written description and anticipation standards, creating a trap where an applicant’s own published application can both fail to provide written description support yet anticipate a later filing.
The distinction between these standards was explained during oral arguments: “In the written description context, you have to point to some specifics, some specific details to establish possession of the invention. Whereas in the anticipation context, it’s not necessarily any specific written details. It’s the overall visual impression, all things considered.”
This case serves as a reminder that inventors and their counsel must carefully plan their patent filing strategies to avoid the paradoxical situation where a prior disclosure becomes both insufficient for priority and fatal to patentability.