Continuation Design Patent Gone Awry

Can a parent patent application be used to reject a continuation design application? The applicant Bonnie Floyd found this out the hard way when the Federal Circuit affirmed a rejection to her design patent application in 2025. See In re Floyd, Fed. Cir. Apr. 22, 2025. Floyd had filed a utility patent application for a cooling blanket in 2016. The utility application described a blanket that included a cooling medium within multiple sealed compartments and described cooling blankets having arrays of sealed compartments, including a 6x6 array and a 4x6 array (see above-left and above-center). Then in 2019, while the utility application was still pending, Floyd sought a design patent for a cooling blanket having a 5x6 array of sealed compartments (see above-right) and claimed priority to the utility application.

The problem? Although the utility application disclosed that “many variations are possible,” the utility application did not explicitly provide support for a cooling blanket with a 5x6 array. The Federal Circuit ruled that the utility application lacked sufficient disclosure to support a priority claim for the 5x6 design. And because no priority existed to the utility application, the 6x6- and 4x6-array cooling blankets became prior art which were used as the basis for an anticipation rejection to the design application.

What can we learn? Applicants should verify there is sufficient description within a utility application to support any continuation design applications they may wish to file in the future. Frequently, the best practice is to file all relevant design applications at the same time as the utility application.