Choose the Words of Your Design Patent Applications Carefully

13 January 2022 IP Litigation Current Blog
Authors: Alexander J. Neuworth

The Federal Circuit recently narrowly construed the claim of a design patent application to reverse the holding of the Patent Trial and Appeal Board (PTAB) affirming the rejection of the claim for a lip implant based on a prior art reference for an art tool.  This case shows the importance of wisely choosing the claim language in design patent applications to balance scope with validity.  This case also illustrates that the prior art field for anticipation rejections is limited to the identified article of manufacture in the design patent application. 

In In re SurgiSil (slip opinion provided here), SurgiSil appealed a decision from the PTAB affirming the examiner’s rejection of App. No. 29/491,550 (the ’550 application).  The ’550 application claims “an ornamental design for a lip implant.”  The Examiner rejected the claim based on a prior art reference, a Dick Blick Catalog (Blick), which discloses an art tool known as a stump.  The Board indicated that “whether a reference is analogous art is irrelevant to whether that reference anticipates.”1

The Federal Circuit reversed.  Referencing 35 U.S.C. § 171 that permits the grant of a design patent to “any new, original and ornamental design for an article of manufacture,” the Federal Circuit stated that “[a] design claim is limited to the article of manufacture identified in the claim … [and] not broadly … [to] a design in the abstract.”2  Accordingly, Blick’s art tool is not anticipatory to the claimed design of a lip implant. 

This holding is consistent with Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Circ. 2019) where the Federal Circuit held that the claim at-issue was limited to the article of manufacture recited in the claim (in that case, a chair).

With recent Federal Circuit enforcement (Curver Luxembourg) and now validity cases limiting the scope of design patent claims to the described articles of manufacture, it is important that applicants choose their claim language wisely.  One potential option may be to make use of an appendix or the detailed description to define the recited claim in a desired manner for potential future enforcement actions or validity challenges.  For example, the claim language may be defined in a way that may be broader, different, or narrower from an otherwise common understanding in order to define the scope of the claimed design to a particular product of a competitor instead of multiple categories of products which may make it more susceptible to validity challenges.



1 In re Surgisil, L.L.P., 14 F.4th 1380, 1381 (Fed. Cir. 2021).

2 Id. at 1382.

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