Design Patent Applications have a single claim. Design Patents are for ornamentation. Utility Patent Applications generally have more than a single claim that concern the invention’s structure, function or both.
Our company received an Office Action for our Lexington branch’s Design Patent Application A from the USPTO. The Examiner argued that the claim of our Lexington Design Patent Application was obvious in view of a Louisville competitor’s Design Patent B. The Examiner rejected our claim.
We think the Examiner is in error. How can we argue against the Examiner’s rejection of our claim?
The Statutory Law
35 United States Code (U.S.C.) Section 103 reads:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Challenging Design Patent Rejections
Possible avenues of argument to rebut a rejection for a Design Patent Application include:
1.) Design Patent B is not analogous art
With respect to non-analogous art, In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides guidance. The Glavas court indicated:
The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.
Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. . . .
On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention.
Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.
2.) The Examiner failed to consider the design as a whole
Among other things, the USPTO Manual of Patent of Examining Procedure indicates that before Design Patent A can be obvious, it must be compared with something in existence. Thus it can be argued that the Examiner failed to make a prima facie case of obviousness if he/she failed to consider the design as a whole.
As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. See In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “…a reference… the design characteristics of which are basically the same as the claimed design….” See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “…not give the same visual impression…” as the design claimed but had a “…different overall appearance and aesthetic appeal…”.) Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.
When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.”
3.) Design Patent B taught in a divergent direction from Design Patent Application A
What does it mean to be “taught away” or “taught in a divergent direction” in relation to a patent application?
A prima facie case of obviousness can be rebutted if the applicant…can show that the art in any material respect ‘taught away’ from the claimed invention…A reference may be said to teach away when a person of ordinary skill, upon reading the reference…would be led in a direction divergent from the path that was taken by the applicant.
— In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001)
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