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Stumped Anticipation for Design Patents

Posted by Thomas P. Howard | Oct 10, 2021 | 0 Comments

By James Juo.

For purposes of anticipation under 35 U.S.C. § 102 for patent validity with respect to utility patents and applications, “whether a reference is analogous art is irrelevant to whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In Schreiber, a claim reciting a conical container top for dispensing popped popcorn was found to be anticipated by a prior art conical spout used to dispense oil from an oil can. The Federal Circuit affirmed that the prior art for dispensing oil inherently performed the functions recited in applicant's claim to a conical container top for dispensing popped popcorn because both structures had the same general shape. In patent prosecution, after the examiner presents evidence or reasoning to show such inherency, then the burden of production shifts to the applicant to show that the prior art do not necessarily or inherently possess the characteristics of the claimed structure. In re Swinehart, 439 F.2d 210 (C.C.P.A. 1971). Where the claim sets forth a functional limitation, and the structural limitations are met by a single prior art reference regardless of whether it is in an analogous or related field of art, and the examiner has reason to believe that the prior art reference inherently teaches the functional limitation, the burden shifts to the applicant to show that the functional limitation cannot be met by the single prior art reference. See In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) (reversing § 102 rejection because there was insufficient reason to believe that a functional limitation was taught by a prior art reference, despite “structural similarity” between the invention and the prior art).

For design patents, which are limited to protecting ornamental features, the Federal Circuit recently held that the anticipation analysis is different. In re SurgiSil, L.L.P., No. 20-1940, __ F.4th __ (Fed. Cir. Oct. 4, 2021).

Here, SurgiSil filed a design patent application claiming an “ornamental design for a lip implant” (Ser. No. 29/491,550).

A lip implant is a piece of soft silicone that typically is inserted through one of two incisions made at the corners of the lip being treated, and placed within a tunnel made between the two incisions to augment or enhance the volume of the lips through cosmetic surgery.

The examiner, however, rejected SurgiSil's claimed design for a lip implant as being anticipated by a Dick Blick catalog for an artist tool called a stump made from tightly spiral-wound, soft paper that is used for smoothing and blending large areas of pastel or charcoal for a drawing. An image of the prior art Blick stump is reproduced below.

The Patent Trial and Appeal Board (“PTAB” or “Board”) affirmed the anticipation rejection, finding that the identification of the article of manufacture in the claim language as a lip implant was not limiting for purposes of anticipation. On appeal, the Federal Circuit disagreed.

“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” In Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1336 (Fed. Cir. 2019), the Federal Circuit held that the claimed design was limited to the claimed article of manufacture, namely a chair. In particular, the Court in Curver held that the claimed wicker pattern for a chair did not cover the use of the same pattern on a basket.

In SurgiSil, the Court noted that, consistent with Curver, the Patent Office's own examination guidelines state that a “[d]esign is inseparable from the article to which it is applied and cannot exist alone . . . .” Manual of Patent Examining Procedure § 1502.

Because the claimed design is limited to lip implants and does not cover other articles of manufacture, the Federal Circuit held that the Board erred in holding that the claimed design is not limited to lip implants, and reversed the anticipation rejection of SurgiSil's claimed lip implant design based on the prior art stump.

Under Curver, the claimed article of manufacture for the design may limit the scope of what may infringe the design patent, so filing separate design patent applications for the same design to cover different articles might be appropriate to consider. And now under SurgiSil, the design of another article in a non-analogous art likely will not anticipate the claimed design for a design patent.

The patent attorneys at Thomas P. Howard, LLC are experienced in evaluating design patents in connection with patent prosecution and litigation.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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