When Can A Design Patent Continuation Applications Claim Priority To A Parent?

In re Owens

Addressing the issue of when and under what circumstances a design patent application can receive the benefit of the written description of its parent, the U.S. Court of Appeals for the Federal Circuit denied a bid by a bottle designer to claim priority to a parent application where a continuation attempted to claim only certain portions of the bottle he designed, finding that the introduction of dotted, unclaimed boundaries introduced new matter. In re Owens, Case No. 12-1261 (Fed. Cir., Mar. 26, 2013) (Prost, J.). 

Timothy Owens appealed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board), affirming a rejection of his continuation design patent application.  The continuation application sought to claim the benefit of priority to a parent design application, which ultimately issued as a U.S. design patent.  Owens conceded that without the benefit of priority to the earlier application, the