In In re SurgiSil, LLP,1 the Federal Circuit held that a claimed design is limited to the particular article of manufacture identified in the claim. In this case, the court held that a design of an earlier tool did not anticipate the claimed lip implant even though the overall shapes were very similar.
SurgiSil appealed the decision of the Patent Trial and Appeal Board (Board) affirming the rejection of SurgiSil’s design patent application, No. 29/491,550 (’550 application). The Federal Circuit held the Board mistakenly determined that the claimed design was not limited to the specific article of manufacture set forth in the claim, and reversed.
The ’550 application claimed an “ornamental design for a lip implant as shown and described.” The application’s only figure was the following:
The examiner rejected the ’550 application as anticipated by a Dick Blick catalog (Blick). Blick showed an art tool termed a stump. Blick’s stump was constructed of tightly wound gray paper and was used for smoothing large regions of pastel or charcoal. Blick’s stump is shown as the following:
The Board affirmed the rejection. It held that the variances in shape between the claimed lip implant design and Blick were negligible, and it rejected SurgiSil’s assertion that Blick did not anticipate because it was a different product than the claimed lip implant. The Board explained that the specific type of article of manufacture being claimed should be ignored when determining anticipation. The Board rationalized that “whether a reference is analogous art is irrelevant to whether that reference anticipates.”2
SurgiSil appealed, and the Federal Circuit reversed. On appeal, the court held that the Board’s ruling was incorrect as a matter of law. The court observed that a design claim is restricted to the article described in the claim and does not broadly encompass a design in the abstract.3 The court made reference to its prior decision in Curver Luxembourg, SARL v. Home Expressions Inc.,4 which limited the design claim to the specific article disclosed in the claim—in that case, a chair. The court also noted that the U.S. Patent and Trademark Office’s examination guidelines similarly state that a “[d]esign is inseparable from the article to which it is applied and cannot exist alone.”5
The court reasoned:
Here, the claim identifies a lip implant. The claim language recites “a lip implant,” . . . and the Board found that the application’s figure depicts a lip implant . . . As such, the claim is limited to lip implants and does not cover other articles of manufacture. There is no dispute that Blick discloses an art tool rather than a lip implant. The Board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope.6
Thus, the Federal Circuit reversed the anticipation holding because the Board mistakenly held that the claimed design was not restricted to lip implants.
Takeaways
When drafting design applications, the specification and claim of the application could be critical in ensuring an appropriate examination and scope. Design patent applicants should consider separate applications with separate claims for different products if the inventive design applies to a variety of products. Alternatively, design applicants that want the design to apply to a specific product should appropriately tailor the specification and claim to the specific product named.
This is a significant design patent decision that considerably tightens the scope of prior art that can be used in an anticipation rejection for design applications. The practical effect of this decision is that it should be more difficult for design applicants to receive anticipation rejections. Thus, taking one design for one type of product and applying it to a different type of product will more likely be patentable, particularly where the design applicant can show nonobviousness, including evidence of commercial success.
Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 In re SurgiSil, LLP, 14 F.4th 1380, 2021 USPQ2d 1008, 2021 BL 378027, 2021 WL 4515275 (Fed. Cir. 2021).
2 Id., 14 F.4th at 1381 (quoting In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)).
3 Id., 14 F.4th at 1382.
4 938 F.3d 1334, 1336 (Fed. Cir. 2019).
5 Id., 14 F.4th at 1382 (quoting Manual of Patent Examining Procedure § 1502).
6 Id., 14 F.4th at 1382 (citations omitted).