Two drawings are two embodiments, not a range

How to read the ledger below. Each numbered point carries the kind of evidence behind it. ESTABLISHED is stated in the authority's own text, with a locator. IMPLEMENTED is the rule as the authority actually applied it. OBSERVED is carried by a source outside this one. ASSUMED is the drafter's inference, flagged as such and not the authority speaking. Quotations are checked against a cached copy of the primary source by script.

In one paragraph

The Federal Circuit affirmed the Board in In re Floyd on 22 April 2025, in a nonprecedential decision. A utility application whose figures showed a 6 by 6 array and a 6 by 4 array did not provide written description support for a design application later claiming a 6 by 5 array, so the design could not claim the utility filing date and was anticipated by that same utility application. The same possession test applies to design and utility applications. The 2 figures differed in the shape of their compartments as well as in array size, which supports reading them as distinct embodiments rather than endpoints of a range, and without endpoints there was nothing to suggest the applicant contemplated the design in between. The court also held that the simplicity and predictability of the underlying article does not carry over into predictability of its possible designs.

Reader summary

An applicant filed a utility application for a cooling blanket, whose figures showed a six-by-six array of rectangular compartments and a six-by-four array of square ones. Later she filed a design application claiming a six-by-five array and claimed priority to the utility application. The Board denied the priority claim and rejected the design as anticipated by the utility application itself.

The Federal Circuit affirmed and worked through five arguments.

The specification's broad language about the blanket being makeable in any size did not carry the claimed design. The Board read that as size variation rather than a different number of compartments, and that reading was reasonable on substantial-evidence review.

Simplicity and predictability did not lower the bar. The court's answer is the most interesting sentence in the opinion: predictability of the underlying technology does not carry over into predictability of the designs, because a design is not limited by its utilitarian function and may range from the straightforward to the ornate.

The two figures did not define a range. They differed in the shape of their compartments as well as the array size, which supports reading them as distinct embodiments rather than endpoints. Without endpoints there is nothing to suggest the applicant contemplated the intervening design.

Inherency failed because nothing suggested a skilled designer would necessarily arrive at the claimed array. The functionality argument was forfeited and would have failed anyway.

Losing the priority date did the rest. The utility application, no longer entitled to be treated as the design's own filing, anticipated it.

Why this matters when you are drafting

The same test governs, so everything in Tier B transfers. Claim 3. A design application claiming a utility parent's filing date is a priority claim under section 120 subject to section 112(a) like any other.

Two embodiments are two embodiments. Claims 7 and 8. The instinct that a figure showing six by six and a figure showing six by four bracket six by five is exactly the inference the court rejects, and the reason it gives is that the figures differ in more than the one dimension. Read this beside indivior-v-dr-reddys, where the same reasoning defeated a numeric range.

Simplicity does not lower the written-description bar for a design. Claim 6. This is the one genuinely design-specific point in the opinion and it runs against intuition: the underlying article may be simple while the space of possible designs for it is not.

Broad boilerplate generalizes away from the embodiments rather than adding to them. Claim 5. Language saying the invention can be made in any size was read as varying the size of the parts, not their number.

Inherency requires necessity, not possibility. Claim 11. A skilled artisan who might select the claimed design is not a skilled artisan who necessarily would.

Raise it before the Board. Claim 13. The functionality argument was forfeited, and the court said so before reaching its merits.

The parent becomes the reference. Claim 1. As in indivior-v-dr-reddys, the document that was supposed to supply the filing date is the document that anticipates once it does not.

What the authority establishes

[ESTABLISHED, the disposition] "we affirm the Board's holding that the disclosure of the '938 application does not provide written description support for the design claimed in the '345 application. Because Floyd's design patent cannot claim priority to the '938 utility application, we affirm the Board's anticipation holding." (P. 13.)

[ESTABLISHED, the statutory route, which is the same one as for utility claims] "An invention described in an earlier filed application in accordance with § 112(a) will benefit from the filing date of the earlier application." (P. 6.)

[ESTABLISHED, and this is the transferable rule] "When determining whether written description support exists, we apply the same test to both design and utility applications, asking" whether the disclosure "reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." (P. 6.)

[ESTABLISHED, the question as the court frames it] "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." (P. 7.)

[ESTABLISHED, broad language did not reach the specific design] The Board found that "nothing in the '938 application leads to the precise visual appearance represented in the" claimed array configuration (P. 4.), a sentence the opinion quotes twice, in the background at that page and again in the analysis at p. 7; per hazard 12 the locator is the first occurrence, which is where the tools resolve it. The Board could reasonably read the broad statements "as merely generalizing away from the depicted embodiments without providing the details needed to show possession of the six-by-five design." (P. 8.)

[ESTABLISHED, and this is the sentence worth carrying out of the case] "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." (P. 9.) Because "The predictability 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 functionality, and which may range from the straightforward to the ornate." (P. 9.)

[ESTABLISHED, why two figures are not a range] "Floyd fails to identify anything in the '938 application disclosing a range of possible arrays rather than the distinct examples depicted in the figures." (P. 9.) And the figures differed in more than one dimension, so "Because the figures show embodiments that differ in multiple ways, not just in the array configurations they embody, the '938 application reasonably supports the view that the figures, rather than defining a range, depict distinct embodiments." (P. 9.)

[ESTABLISHED, no endpoints means no intervening support] "Because the figures of the '938 application do not define endpoints of a range that might suggest 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." (P. 10.)

[ESTABLISHED, resemblance is not description] The court cites Ariad that a description "that merely renders obvious the invention does not satisfy the requirement." (P. 10.) The quotation begins after a bracketed alteration in the source, per hazard 9. And it cites Vas-Cath for the proposition that "a description that suffices to anticipate does not necessarily satisfy the written description requirement." (P. 10.)

[ESTABLISHED, in haec verba is not required and does not rescue this] "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." (P. 10.)

[ESTABLISHED, inherency has a high bar] "The '938 application's disclosure of two specific arrays of individualized 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." (P. 11.) The missing matter must necessarily be present, not merely possible.

[ESTABLISHED, carving a claim out of a broad disclosure is not enough] The court cites Purdue Pharma v. Faulding as rejecting the view that "the written description requirement was satisfied because the disclosure revealed a broad invention from which the claims carved out a patentable portion" (P. 11.).

[ESTABLISHED, the forfeited argument] "Floyd forfeited her functionality argument by failing to raise it before the Board." (P. 12.) Reaching the merits "would not lead us to a different conclusion, however, as Floyd's argument calls for us to ignore findings of fact supported by substantial evidence." (P. 12.)

[ESTABLISHED, the standard of review, which explains the shape of every section] The written-description inquiry is a question of fact (P. 6.), and the court will not disturb the Board "simply because the Board chose one conclusion over a plausible alternative." (P. 6.)

[IMPLEMENTED, and it is why this record belongs in a continuation corpus] Claims 1, 2 and 3 together mean a design application claiming priority to a utility parent is doing exactly what a continuation does, and it fails in exactly the way Tier B's continuations fail: the parent does not describe what the child claims, the priority date goes, and the parent becomes the reference.

[ASSUMED, drafter's inference, flagged as such] Claim 7 suggests a practical drafting consequence: figures that vary along one dimension read more like a range than figures that vary along several. Where a family may later want a design claim, or an intermediate embodiment, disclosing variants that differ in one respect only is materially stronger than disclosing two fully distinct embodiments. The opinion does not offer this as advice; it follows from claims 7 and 8.

Quotations, verified against the source

All from the Federal Circuit's nonprecedential opinion. Page locators computed from the docket stamp.

"An invention described in an earlier filed application in accordance with § 112(a) will benefit from the filing date of the earlier application." (P. 6.)
"When determining whether written description support exists, we apply the same test to both design and utility applications, asking" (P. 6.)
"reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." (P. 6.)
"simply because the Board chose one conclusion over a plausible alternative." (P. 6.)
"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." (P. 7.)
"nothing in the '938 application leads to the precise visual appearance represented in the" (P. 4.)
"as merely generalizing away from the depicted embodiments without providing the details needed to show possession of the six-by-five design." (P. 8.)
"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." (P. 9.)
"The predictability 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 functionality, and which may range from the straightforward to the ornate." (P. 9.)
"Floyd fails to identify anything in the '938 application disclosing a range of possible arrays rather than the distinct examples depicted in the figures." (P. 9.)
"Because the figures show embodiments that differ in multiple ways, not just in the array configurations they embody, the '938 application reasonably supports the view that the figures, rather than defining a range, depict distinct embodiments." (P. 9.)
"Because the figures of the '938 application do not define endpoints of a range that might suggest 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." (P. 10.)
"that merely renders obvious the invention does not satisfy the requirement." (P. 10.)
"a description that suffices to anticipate does not necessarily satisfy the written description requirement." (P. 10.)
"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." (P. 10.)
"The '938 application's disclosure of two specific arrays of individualized 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." (P. 11.)
"the written description requirement was satisfied because the disclosure revealed a broad invention from which the claims carved out a patentable portion" (P. 11.)
"Floyd forfeited her functionality argument by failing to raise it before the Board." (P. 12.)
"would not lead us to a different conclusion, however, as Floyd's argument calls for us to ignore findings of fact supported by substantial evidence." (P. 12.)
"we affirm the Board's holding that the disclosure of the '938 application does not provide written description support for the design claimed in the '345 application. Because Floyd's design patent cannot claim priority to the '938 utility application, we affirm the Board's anticipation holding." (P. 13.)

Tensions and open questions

Claim 6 is stated as a general proposition in a nonprecedential opinion. That the predictability of an article does not transfer to the predictability of its designs is the most quotable thing here and the least authoritative.

What would have made the figures a range is not spelled out. Claim 7 says they differed in multiple ways; claim 8 says they did not define endpoints. Whether two figures differing only in array size would have sufficed is left open and is exactly the case a practitioner would want answered.

The interaction with rai-strategic-v-philip-morris is not addressed. The applicant cited it for the proposition that a predictable, simple field needs less detail, and the court answered on the design-specific ground in claim 6 rather than by distinguishing the case.

Anticipation by one's own application is affirmed in a sentence. Claim 1 records it as following from the priority loss, with no separate analysis in what was read.

Everything runs through substantial-evidence review. Claim 14. The court repeatedly says the Board could reasonably read the specification as it did, which is a different statement from saying the specification means that.

What this record does and does not cover

The written-description standard as applied to designs, all five of the applicant's arguments, and the disposition were read end to end.

What was NOT read closely, and is therefore outside what this record can support: the technology, the figures themselves, and the Board's decision. This record says nothing about whether the design was ornamental or functional as an original matter, because that argument was forfeited, nor about the details of the anticipation analysis. RAI Strategic Holdings is cited by both sides here and has its own record in this corpus, distilled from its own opinion rather than from this one.

Currency

This record was verified against its primary source on 2026-08-15. That is a fidelity check: the quotations, locators and attribution are accurate to that source. Whether the authority has since been narrowed, distinguished, abrogated or reversed has not been checked here. Confirm it still stands before relying on it.