IP Law Daily, PATENT—Fed. Cir.: Ornamental cooling blanket design patent not entitled to priority date of earlier utility patent, (Apr 22, 2025)

By Kevin M. Finson, J.D.

A claimed design could not claim the priority date of an earlier utility patent application because the design patent application claimed a cooling blanket with a 5x6 grid while the utility patent only described 4x6 and 6x6 grids.

A designer of a cooling blanket was not entitled to the priority date of her earlier utility patent application when seeking a design patent, the U.S. Court of Appeals for the Federal Circuit has held, in affirming a Patent Trial and Appeal Board decision affirming a refusal on the ground of anticipation. The design patent application added new material for which there was no written description support in the earlier application (In re Floyd, No. 23-2395 (Fed. Cir. Apr. 22, 2025)).

Bonnie Iris McDonald Floyd was the applicant under Design Patent Application No. 29/685,345 (the ’345 application) which claimed an ornamental design for a cooling blanket appropriate for humans and animals, depicted as a 5x6 grid of rectangular sections separated by narrow channels. Floyd argued that the ’345 application should have priority to her earlier utility patent application, Application No. 15/004,938 (the ’938 application) which claimed a cooling blanket and featured example embodiments of a 4x6 or 6x6 grid.

The patent examiner concluded that the ’345 application could not claim the benefit of the ’938 application’s priority date because it included new matter and lacked written description support of the claimed design, and that therefore the ’938 application was prior art which anticipated the claimed design. Floyd appealed, the Patent Trial and Appeal Board (PTAB) affirmed the rejection, and Floyd appealed again to the Federal Circuit.

Written description. Floyd argued that the Board erred in finding the ’938 patent lacked written description support for the design claimed in the ’345 application. It was undisputed that if the design application were not entitled to the priority date of the utility application it would be invalid as anticipated. The ’938 application had expressly stated that it was not limited to the two embodiments depicted, and that the claimed blanket could be made in any size.

The Federal Circuit found that this language was too broad to effectively claim all sizes of grids, and that substantial evidence supported the PTAB’s determination that the ’938 application should be read to claim larger or smaller blankets preserving the same design, and not to different, undepicted designs. While a 5x6 grid was between the sizes of the two claimed embodiments, Floyd had not defined the endpoints of a range in a way that would lead a skilled artisan to believe she possessed all of the intervening grid sizes.

The Federal Circuit affirmed the rejection of the design patent application.

The Case is No. 23-2395.

Judge: Linn, R.

Attorneys: Michael Drew (Michael Drew, Attorney at Law LLC) for Bonnie Iris McDonald Floyd. Brian Racilla, U.S. Patent and Trademark Office, for Coke Morgan Stewart.

Cases: Patent FedCirNews USPTO