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Federal Circuit limits disqualifying prior art for design patents

April / May 2022 IP Newsletter

Can the existence of a similar-looking art tool anticipate or render obvious a patent for the design of an item used in plastic surgery? Fortunately for a design patent applicant, the U.S. Court of Appeals for the Federal Circuit found in In re: SurgiSil, L.L.P. that the Patent Trial and Appeal Board (PTAB) erred in finding that the art tool anticipated a lip implant, rendering the implant’s design unpatentable.

Patent application gets kiss of death

SurgiSil applied for a patent for an “ornamental design for a lip implant.” Among other things, an invention must be novel to be patentable.

The patent examiner rejected the design for the lip implant as anticipated by “prior art” — in this case, the catalog for an art supply business — and therefore not novel. The catalog included an art tool called a “stump” used for smoothing and blending large areas of pastel or charcoal.

The PTAB affirmed the examiner, finding that the differences in shape between the lip implant design and the stump in the catalog were minor. It rejected SurgiSil’s argument that the catalog couldn’t anticipate the lip implant design because the catalog described a “very different” item (or “article of manufacture”).

The PTAB reasoned that it was appropriate to ignore the item identified in the patent claim language. It further explained that whether a prior art reference is analogous to the design at issue is irrelevant to the question of anticipation.

The court dresses down the PTAB

The Federal Circuit faulted the PTAB’s finding that the item identified in a patent claim isn’t limiting. Rather, a design patent claim is limited to the item identified in the claim — it doesn’t broadly cover a design “in the abstract.”

The Patent Act allows the grant of a design patent only for “new, original and ornamental design for an article of manufacture.” Moreover, the Patent Office’s examination guidelines state that a design is “inseparable from the article to which it is applied and cannot exist alone.”

The patent claim language at issue specifically identified a lip implant, and the graphic figure in the application depicted a lip implant. As such, the patent would be limited to lip implants and not cover other items.

The stump in the catalog was an art tool, though. It wouldn’t infringe a patent for the design of the lip implant, so it didn’t anticipate the design.

Not just cosmetic

The Federal Circuit’s ruling should raise the bar for the PTAB’s anticipation rejections of design patents that identify an article of manufacture. But it also could limit the enforceability of such patents against nonanalogous items.

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