Federal Circuit disposition — 23-2395

N OTE: This disposition is nonprecedential.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
______________________
M ICHAEL 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
W ILLIAM LA MARCA , AMY J. N ELSON, FARHEENA YASMEEN
RASHEED.
______________________
Before PROST, LINN, and S TOLL, Circuit Judges.
L INN, 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
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IN RE : FLOYD 2
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
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IN RE : FLOYD 3
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.
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IN RE : FLOYD 4
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
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IN RE : FLOYD 5
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.
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IN RE : FLOYD 6
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.
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IN RE : FLOYD 7
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
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IN RE : FLOYD 8
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.
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IN RE : FLOYD 9
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
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IN RE : FLOYD 10
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
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IN RE : FLOYD 11
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.
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IN RE : FLOYD 12
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
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IN RE : FLOYD 13
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.
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