Design Patents §103 – Obvious to Whom and As Compared to What?

Guest Post by Paul Morgan

This is an increasing important and not fully resolved legal issue which should logically be addressed in the pending Fed. Cir. appeal of the nearly $1 billion infringement damages award in Apple v. Samsung, re the Apple design patents held infringed.   That award seems to have inspired increased design patent assertions and design application filings.  In that case Judge Koh had even called the application of the Supreme Courts controlling KSR decision on §103 an “open question” as to design patents!  Apple, Inc. v. Samsung Electronics Co., Ltd., Case No.: II-CV-01846-LHK, Slip Op. at 19 (N.D. Cal. Dec. 2, 2011).   These issues could also arise soon in PTO IPR PTAB decision appeals to the Fed. Cir.  The PTAB has already issued a final written decision in the first IPR against a design patent. Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd, IPR 2013-00072 (Paper No. 28) (April 21, 2014).

In contrast to utility patent litigation, in design patent litigation summary judgments for non-infringement are relatively rare, while summary judgments for §103 obviousness are more common.  This is so even though they have the very same §103. Yet the Supreme Court’s controlling §103 guidelines in KSR Int’l Co. v. Teleflex Inc, 550 U. S. 398 (2007) have been strangely totally ignored or not applied in many subsequent design cases.  Instead, unique old Fed. Cir. case law is still being applied in making §103 design prior art comparisons and combinations, as discussed below.  Perhaps this reportedly high rate of design patent §103 summary judgments logically correlates with the prior study and report on this blog at: showing that design patent applications are issued with only rare §103 rejections by PTO design patent application examiners?  That is, prior art is rarely being applied at the examination stage.  Again, this is opposite from PTO utility patent application examination, even though under the very same §103 standard.  A recent example of a Fed. Cir. sustained §103 summary judgment of two design patents in suit isMRC Innovations v. Hunter Mfg. (Fed. Cir. 2014).

Is another reason for relatively less non-infringement than §103 summary judgments in design patent cases due in part to the usual absence of any verbal claim distinctions, plus the Egyptian Goddess “ordinary observer” test?   The “ordinary observer” test for designpatent infringement must also be contrasted with the traditional judicial view of design patent “claims scope” as narrow – see, e.g., cases cited in the article “Functionality and Design Patent Validity and Infringement”, 91 Journal of the Patent and Trademark Office Society (JPTOS) 313, May, 2009, by Perry J. Saidman of the DesignLaw Group.  But is the scope of design patents now being treated consistently with the black-letter case law that claims in litigation must have the same scope for infringement and validity?  Is there a problem with lack of legal guidance of how prior art is to be treated in defining a design patent’s claim scope for, or before, an “ordinary observer” infringement test?  [It has been argued that this was a jury instruction defect in the above Apple decision.]

In what seems like a remarkably begrudging semi-admission [which may be due to its particular panel members], the panel in Titan Tire Corp. v. Case New Holland, Inc. 566 F.3d 1372, (Fed. Cir. 2009) said that “it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.”  However even this Fed. Cir. panel held that: “Our precedents teach that ‘the ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’ Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390 (CCPA 1982)).”

Yet the patent statute at §171 is perfectly clear that design patents have the very same §103 as other patents.  §103 requires “..that the claimed invention as a whole would have been obvious .. to a person having ordinary skill in the art to which the claimed invention pertains” [emphasis supplied].  For design patents  that has to be a person having ordinary skill in the art of industrial product design, not the non-skill level of any lay person, such as a jury member.    [This §103 requirement should, of course, not be confused with a §102 novelty test.]

The prior en banc Federal Circuit “Egyptian Goddess” decision on design patent infringement, Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d 665 (Fed. Cir. 2008), notes, just after referring to “the hypothetical ordinary observer who is conversant with the prior art” test fordesign patent infringement, that: “We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement.”  Unfortunately this en  banc Egyptian Goddess decision did not clarify that statement further.

In High Point Design LLC v. Buyers Direct, Inc., (Fed. Cir. 2013) a Fed. Cir. panel had to face up to the District Court below having been mislead by one of the Court’s own prior design patent decisions, and had to re-clarify its §103 “obvious to whom” case law.  Key text in this High Point Design decision includes:

The use of an “ordinary observer” standard to assess the potential obviousness of a design patent runs contrary to the precedent of this court and our predecessor court, under which the obviousness of a design patent must, instead, be assessed from the viewpoint of an ordinary designer. See Apple, 678 F.3d at 1329 (“In addressing a claim of obviousness in a design patent, ‘the  ultimate inquiry . is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’”) (quoting Durling, 101 F.3d at 103); Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380–81 (Fed. Cir. 2009) (same); In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (“The central inquiry in analyzing an ornamental design for obviousness is whether the design would have been obvious to ‘a designer of ordinary skill who designs articles of the type involved.’”) ..

Although High Point Design cites prior Fed. Cir. decisions which note §103, its does not base the decision directly on this controlling statute, as it could and should have!   Instead, this High Point Design footnote 2 below unsuccessfully attempts to explain-away a priorconflicting, erroneous “ordinary observer” invalidity test decision, but ends up by noting that it cannot, in any event, overrule even earlier Fed. Cir. decisions:

2 We do not believe our decision in International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009), cited by the district court, compelsa contrary conclusion. The International Seaway court may in fact have had the “designer of ordinary skill” standard in mind when it used the term “ordinary observer.” In any event, the court could not rewrite precedent setting forth the designer of ordinary skill standard. See Vas Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.3d 757, 765 (Fed. Cir. 1998).

This High Point Design decision should, finally, end part of the debate over the proper “obvious to whom” test for design patent obviousness.  [Prior §103 design patent decisions include In re Nalbandian, 661 F.2d 1214, 1215-16 (CCPA 1981) and In re Carter, 673 F.2d 1378 (CCPA 1982), both cited in MPEP Section 1504.03, and the above Walter E. Durling v. Spectrum Furniture Company, Inc., 101 F.3d 100, 103 (Fed. Cir. 1996).]

* * * *

However, High Point Design still leaves another important unresolved §103 issue for design patents, one serious enough that it may end up in another Supreme Court challenge if the Fed. Cir. does not address it.  I have labeled this the “as compared to what”? question.    Because High Point Design does not even mention KSR and instead continues to apply an additional and unique “obviousness” analysis requirement for design patents from old pre-KSR case law.  An additional requirement that is not in §103 and does not seem consistent with KSR or even some other §103 combination of references case law.   Specifically, High Point Design states:

When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal quotations omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). Under the first step, a court must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling, 101 F.3d at 103.”

Another way in which this above unique old special §103 test for design patents is sometimes expressed is a requirement to “first find a Rosen reference” (In re Leon Rosen, 673 F.2d 388, 391 (CCPA 1982)).  [That may be quite difficult in some cases.]  Note particularly the above High Point requirements for first finding a single reference that has “basically the same” design characteristics and visual impression, and only modifying it with other references to create “the same overall visual appearance.” Does that seem appropriate for a normal §103 analysis?  Does this old judicially created §103 analysis for design patents not significantly reduce §103-usable or combinable prior art?  How is that consistent with the controlling Sup. Ct. KSR §103 guidance for combining references, completely ignored in High Point Design?  Has anyone suggested any reason why KSR does not apply to design patent §103 analysis?

In this respect, here are some specific §103-KSR issues to consider.  Is not the designing of costly consumer products intended to be sold by the millions [like smart phones] an “art” in which the §103 “ordinary skill” level of product designers would be expected to be especially high?   Furthermore, do not professional product designers normally work on many different products and use product appearance design ideas from many different fields and products, far more than for utililty patents?  To express that another way, should not “non-analogous art” arguments against combining art for a 103 rejection be even less effective for design patents after KSR than for utility patents?

* * * * *

I have no stake in any of these interesting legal issues.  I simply think members and professional organizations of the patent bar as well as legal academics should be doing more pro bono thinking about them.  Hopefully the Federal Circuit will provide clearer guidance in future decisions.


50 thoughts on “Design Patents §103 – Obvious to Whom and As Compared to What?

  1. 9

    Perry: any SCOTUS decision on design patents would likely be an unmitigated disaster.

    Why do you believe this?

    Seems to me the bigger disaster would be to keep the Supreme Court “out of the loop” while those seeking to exploit the current glaring failures in the system get addicted to the status quo.

    I guess it depends on where your interests lie, doesn’t it?

  2. 8

    It seems as if it could be made easier to search for similarities between designs than for similarities between text based claims.

    What’s needed is a template for submission of all design applications. Perhaps two templates, one for 2-D design descriptions and one for 3-D design descriptions. You submit your solid lines as a picture (just like now) and also as a corresponding set of data files (e.g., x/y and/or x/y/z coordinates, or vectors) that would be created by a PTO-approved (and supplied) program. Those files go into the PTO design database. Another program searches your submitted files against files in the prior art in the PTO design database.

    Obviously the computer doesn’t perform every step in the Examination but it seems that something like this could simplify the initial step of identifying the most similar designs.

  3. 7

    So, I’ve been skimming the 1,499 design patents granted by the USPTO in the two weeks thus far this month.

    I started off looking for something non-obvious but got side-tracked by some other questions.

    When you see 6 patents granted on the same day to the same inventor, for a plug having various shapes (round, triangle, square, pentagon, hex, star), doesn’t that almost beg for one to think it must have been obvious to try each shape?

    Similarly, when you see 10 or so granted patents to 10-side die having (for each patent) various different arrangements of the placements for the numbers, or having letters and numbers mixed on a die, does it make you wonder what in the world lends non-obviousness to tossing off various combinations of numbers/letters?

    When you see 8 patents granted to the same inventor for what appear to be photos of cut stone slabs (i.e., like granite countertops), does it make you wonder if this is even patentable subject matter?
    (Although to be fair, NB that I cannot tell from the photos if these are natural stone slabs or created aggregates – if the latter, perhaps both the subject matter eligibility and the non-obviousness came from the manner in which the aggregates were mixed prior to being set.)

    1. 7.1

      A correction – I wrote “granted… in the last two weeks”. There were actually 3 granting Tuesdays up to 16 Sep, so that really counts as 3 weeks, not two.

    2. 7.2

      Equal treatment for design patents! Since each of them has only one claim, you must get multiple design patents to have claims of different scope. This is similar to having multiple independent (and dependent) claims in a single utility patent.

      1. 7.2.1

        Thanks Perry. I believe your comment helps explain in part the question I had about the plug patents.

        But what about the non-obviousness of putting various numbers and letters on 12-sided dice? A single one patent has figures 1-11, which can be broken down into groups:


          (Oops, somehow prematurely posted)
          at least these groups:
          1. Arabic numerals 1-9 only, 3 faces blank;
          2. Mostly Arabic numerals (1-8), 3 faces blank, 1 of the numerals replaced by a letter;
          3. Mostly Arabic numerals (1-9), no faces blank, what had been blanks now having letters;
          4. Mostly Arabic numerals (1-9), no faces blank, what had been blanks now having Roman numerals;
          5. Another version of 3 (letters differ).

          Which of these is the patentee’s “only one claim”?

          Surely the patentee doesn’t own dodecahedron dice with numbers on the faces – I played with those 40 years ago in my D&D days.

          The non-obvious ornamental feature might perhaps have been the choice to have some faces left blank, but other figures fill those in, so that is apparently not what they are claiming.

          What does this patentee actually own?


            The prior art has dice with numbers on the faces, and dice with letters on the faces (a rhombic dodecahedron with letters on its faces is apparently in the Louvre, among many other dice examples).

            Dodecahedrons with blank faces are very old indeed. As PS points out, the PTO didn’t restrict so we can assume that the PTO decided that dice with letters replacing numbers, or Roman numerals replacing Arabic numbers, or blanks replacing Arabic numbers or letters, or vice versa are all obvious variants of one another.

            So how are these dice designs non-obvious in view of the prior art designs? Something ain’t right.


          The fact that all of the figures (embodiments) are in one design patent means that the PTO has determined that all of the designs are obvious in view of each other, i.e., no restriction requirement was made. I haven’t looked at this particular patent… and would prefer not to comment on specific patents in any event…


            “I haven’t looked at this particular patent… and would prefer not to comment on specific patents in any event…”

            Thanks for the reply, and understand about the issue you have re discussing particular patents, given it’s your line and you don’t want to be seen as dissecting the work of others. I wouldn’t, either.


            The PTO has recently given ODP training to examiners in which the SPEs have explicitly said that restriction and ODP are not mutually exclusive. The PTO’s opinion is that a lack of a restriction is not a determination of obviousness.


              MPEP 1504.05: “The obviousness standard under 35 U.S.C. 103(a) must be applied in determining whether multiple [design] embodiments may be retained in a single application. See MPEP § 1504.03. That is, it must first be determined whether the embodiments have overall appearances that are basically the same as each other. If the appearances of the embodiments are considered to be basically the same, then it must be determined whether the differences are either minor between the embodiments and not a patentable distinction, or obvious to a designer of ordinary skill in view of the analogous prior art . If embodiments meet both of the above criteria they may be retained in a single application.”

  4. 6

    I guess what I was inarticulately intending from my earlier comment, if we go down the path of adding in the broad range of obviousness inquiry suggested in the article, are we not left with a meaningless design patent regime? Designs that incorporate elements from other facets of our lives or nature would no longer be subject to protection under design patents, as they are merely obvious combinations of known elements. If you remove the inventor’s artistic element from the discussion of the difference between the prior art and the design to be protected, then we should toss out design patents and depend on copyright instead.

    The question then becomes, do we see design patents as having some intrinsic value above and beyond copyright and as distinct from utility patents, as written into US law. I think other countries have regimes that recognize an element of utility in designs that is mostly missing from the patentability inquiry in the US. Expanding the scope of things that would be obvious would remove this utility element even more from the US patentabiltiy inquiry.

    1. 6.1

      Alan: if we go down the path of adding in the broad range of obviousness inquiry suggested in the article, are we not left with a meaningless design patent regime?

      That depends on what you believe is a meaningful purpose for a “design patent regime”.

      If someone has an unusual, complicated design for an object or a very narrowly defined design that’s “clean” in appearance (but is claimed with great specificity), then the claimed design seems more likely to be non-obvious and protectable. I don’t see why such protection wouldn’t be “meaningful” to someone who’s products embody that design. I can see why such a regime wouldn’t be “meaningful” to a design patent troll, however.

    2. 6.2

      The intrinsic value of design patents stems, in part, from the fact that copyright law, as currently interpreted by the separability requirement, is woefully inadequate to protect articles of manufacture – for which design patents are the only game in town. You can register about 1% of useful articles with copyright.

  5. 5

    The issue of whether and how KSR applies to design patent obviousness is currently the subject of a SCOTUS Petition for Cert. – MRC v. Hunter (No. 14-5).

    1. 5.1

      Thanks Perry. Let us know the result.

      BTW, note that I cited your excellent JPTOS article on design patents.

      1. 5.1.1

        Perry, re that MRC v. Hunter cert petition, somehow I do not think the Supreme Court is going to be that inspired to “advance ..the useful arts” by reversing the Fed. Cir. sustained 103 rejections of two design patents on a “football jersey for a dog,” no less. Or to put it another way, on a “bad facts make for bad law” basis, one should hope they do NOT take cert on that case, as they might do some serious damage to design patent law, not just tell the Fed. Cir. to stop ignoring KSR.


          Paul, I couldn’t agree more that any SCOTUS decision on design patents would likely be an unmitigated disaster.

  6. 4

    I would think that we need to readdress TSM in this context. It would be absurd to apply the overly broad “obvious to try” standard in this design world. Yes, all designers use influences from elements of other designs or works of nature. The abstraction of these elements and the combination or adaptation of these various elements into a design in a new field should not be “merely obvious to try.” You can look at fruit sitting on a table and capture a unique image of that art in oil on canvas. This is a work of unique authorship. Why should a mobile phone design derived from some other object (NOT another mobile phone) not also be considered a work of unique authorship?

    I know I am mixing concepts from two different types of IP, but i think the analogy is apt. If it is not an exact copy of some other design, then how far away from that original design does the new idea have to be? And once you start going down the path of saying the range of “non-analogous art” to be considered obvious should be much broader, how do you draw a line to limit that inquiry?

    While I agree that the practice of examining and enforcing design patents is a bit goofy right now, I am not comfortable with the scope of toughening the obviousness evaluation suggested by the author.

    1. 4.1

      “You can look at fruit sitting on a table and capture a unique image of that art in oil on canvas. This is a work of unique authorship. Why should a mobile phone design derived from some other object (NOT another mobile phone) not also be considered a work of unique authorship?”

      Meh, then get a copyright – as you’ve already suggested, you are mixing concepts.

      A patent should be granted for an invention. I have rarely if ever seen the design patent that appeared to me to involve any inventive (i.e. non-obvious) features, except where those features were essentially the look of non-obvious functional matter (which brings another issue to bear, depending on how much the design may be really not more than the necessary look of the functional element).

    2. 4.2

      Alan, if the very low “originality” threshold for copyrights were legislatively substituted for 103 for design patents [highly unlikely] and the scope expand to any artwork, it would not be a patent. You would be restricted to the much more difficult proof [and narrow scope] of actual direct “copying,” instead of the loose “ordinary observer” test for infringement of even independently designed [not copied] products and the legal ambiguity in that test as to prior art treatment for design patents. Also you would lose the patent-level presumption of validity, the probable requirement of clear and convincing evidence to invalidate, etc.

    3. 4.3

      Alan: Why should a mobile phone design derived from some other object (NOT another mobile phone) not also be considered a work of unique authorship?

      Because it’s really not a “work of unique authorship” but a design swiped from somebody else. Why should it make any difference whether the design is filled with mobile phone circuitry or TV remote control circuitry or garage door opener circuitry (or two of these, or all three — surely someone has already tried to patent that magical combo) or a movie prop filled with nothing at all?

      Take the easy case and think about it: a design for a touchpad for a handheld device X that’s completely blank. It’s a super clean look! Nobody put such a touchpad on handheld device X before. Does that make the design patent-worthy? Of course not. It’s an old design.

  7. 3

    In the EU, we have a harmonised pan-EU Registered design (design patent) law. It was arrived at by taking the best from the national design patent laws of the EU Member States.

    The test for infringement is an echo of the test for registrability, namely “individual character”.

    The scope of the registration is assessed having regard to the “degree of freedom” that was available to the designer. Take the field of toothbrushes, for example. How much design freedom is available today, and how much was there back in the days when people had nothing better than pointed sticks with which to clean their teeth.

    Or take smartphones. How has Apple fared, for example, under EU design law?

    When I was young, the Rule of Thumb was that if the accused infringement was “closer” to the subject matter of the Registration than the “closest” prior art, the patent owner would win, otherwise not. Isn’t that still the Rule of Thumb? Everywhere? Is it not that, however much you mangle it through inapplicable tests like “obviousness”, in the end the same old Rule of Thumb settles the matter?

    So is this yet another example of Kahnemann/Haidt’s powerful and quick-thinking elephant versus his powerless and slow-thinking mahout?

    1. 3.1

      Max, I am sure you know far more on the subject of EU design protection. However, one reason for some lack of admiration for it here has been complaints that the EU has allowing indiscriminate unexamined design registrations of even ugly internal functional autombile machine parts with no ornamental intent and invisible to customers, which design registrations interfere with the public obtaining replacement parts by interfering with free market competition in them. I would be interested in your response to that accusation?

      1. 3.1.1

        Paul I wrote you a long reply, put a lot of thought into it, only to get the “Stuck in Moderation” header. No idea why. Most upsetting.

        Dennis can you release it from moderation? Please?


          A poropos my blocked posting, I spotted in it a word that might have alerted the filter. I changed it in the Version below.

          So, here goes. Posting again:

          Interesting Paul. Ugly! Functional! Whatever next? I hope you will tell more on these accusations, after reading me below.

          The EU design patent stems from the days when i) if anybody bothered to register their designs, it was only in their home country and ii) countries were vying with each other to be the most IPR-friendly. So the EU Reg Des is fast, cheap and pough tent because Copyright is so cumbersome, and the pols thought that all EU Reg Des owners would be European and all infringers of them would be aliens.

          It is a patent, in that it is no defence to have not copied. But, as the scope tends to be narrow, the EU Reg Des is useful mainly against copiers.

          Readers might be surprised what is protectable. No aesthetic merit required. Needn’t be ornamental, can be purely functional. Not many defences then, if you have, shall we say, “copied” the other fellow’s design.

          Parts of machines. Can they be protected? Up to a point. They have to be visible in normal use (Ferrari engine cylinder head cover anyone? Motorcycle parts? What does Harley do now, in Europe, with ist innovative new designs? Register them?). Design surface area regions that “must fit” or “must match” with the rest of the machine cannot be patented.

          The EU Reg Des is an “unexamined right”. Apply and you get your Registration Certificate straightaway. The corollary is that there is a lively business in cancelling invalid registrations.

          So what is the substance of your accusations? Are manufacturers allowing themselves to be intimidated by EU Reg Des rights that are (shock, horror) invalid? In Europe? Could that be it?

          That said, free market competition in spare parts is not always an unalloyed good thing. Are you for it, when it concerns aircraft engines, or the brake pads and suspension system components on your car? Printer ink cartridges is another interesting area.

          But I agree with those who point out that all patents are a restraint on free trade. They have to kept firmly in their appointed place, if economic progress and wealth creation is to be fostered, not hindered.


            Max, since you admit that what I said is quite possible, have you considered that when you need to replace your brake pads that their EU “design” registration not only could make the replacement brake pads most costly, it might even encourage your garage to buy cheap unlicensed blackmarket parts that are not from a reputable replacement parts supplier, which parts might fail the next time you are at full speed on the autobahn?


              Paul, thanks. Right! It is clear I haven’t thought enough about your issue. Patent rights, whether they are a Good Thing or a bad. It seems to be more complicated than I realised. Patents put up prices, I gather from you. Very bad, I gather from you.

              What sort of brake pads can one see in normal use? None. So I guess that, after all, they cannot be the subject of a valid EU Design Registration. My mistake. So, counterfeiters, green light. No worries. Carry on. If you think you can sell any.

              What do you mean by saying that I “admit”. That the EU Design Registration is an unexamined right? That therefore some that have issued are invalid? That’s a feature not a bug. So why is what I write any Kind of “admission”?

              Have you simply got something against unexamined rights?

              In my AUDI 3 liter I routinely do up to 225 kph on the Autobahn. You know, I have never had the slightest doubt that my AUDI dealer uses genuine AUDI spare parts. When I fly Lufthansa too. Of certain other airlines though, I’m not so sure.

              It’s hard to think of the trade in spare parts today though, isn’t it. When the thing breaks, these days, and that’s hardly ever, we usually throw it away don’t we?

              But I hazard a guess that AUDI has at least 20 utility patents covering any one of its brake pads. Wasn’t it AUDI that ran an Advertising campaign along the lines of “More patents in an A1 than in the whole of NASA”.

  8. 2

    Great article, Paul.

    There is an enormous amount of work to be done. Unfortunately for many of the companies and individuals who will fall victim to the US design patent system, unless some intervening event occurs, it’s going to cost people millions and millions of dollars of attorney fees before the judiciary gets it right.

    “non-analogous art” arguments against combining art for a 103 rejection [should] be even less effective for design patents after KSR than for utility patents?

    I believe that’s correct.

    There is nothing at all “non-obvious” about swapping an ornamental design choice from one “art” and using it another “art”. There is no “utility” consideration relevant to the non-obviousness of design patents. What does “art” even mean in the context of ornamentation? Presumably it means simply “art”.

    If I want a design patent on some abstract shape (e.g., a logo) affixed to an article there is no logical reason to limit the relevant art to similar articles with that logo unless the article itself is part of the design (and drawn with solid lines). The question should simply be: is the design novel and non-obvious in view of all of the designs in the massive reams of prior art (that the PTO will never, ever properly search).

    Designs for web pages, for example, need to be evaluated in view of not only all the web pages in the prior art, but all the newspapers, magazines, films, brochures, paintings and other materials in the prior art.

    And of course this means that the simpler your design is, the more likely it will be that it is unpatentable. Featureless boxes are old in the prior art. Really old.

    In additions, some of the eligibility restrictions that apply to utility patents should also apply to design patents. If all you are doing with your “new” “electronic display” “design” is changing the information that is being displayed in some otherwise non-innovative font, you’re out of luck.

  9. 1


    Is that the issue here?

    It seems to me that one can have a standard of obviousness that is different from the standard of infringement without affecting scope. The obvious-to-a-designer standard narrows the scope of patentability. But in considering infringement, the ordinary observe standard seems right.

    Outside of designs, we note that it is not a defense to infringement to say that infringer is only practicing the prior art, or an obvious variation. One must directly attack the validity of the claim based upon the standards for proving the claim invalid, which are a lot higher than for proving infringement.

    1. 1.1

      One must directly attack the validity of the claim based upon the standards for proving the claim invalid, which are a lot higher than for proving infringement.

      Which is absurd in the case of design patents because they aren’t “examined” in any meaningful way.

      It’s going to be fun watching the same characters rush into the design patent kiddie pool. How long will that party last? 30 years?

      Doubt it.

      1. 1.1.1

        “Which is absurd in the case of design patents because they aren’t “examined” in any meaningful way.”

        Which is different how from the “computer implemented” arts?



            I agree with you and would (politely) add that most people can easily see the ‘point’ being made – perhaps with the exception of the blog editor who seems not to be able to see the implicit insults that make up that ‘point.’ The “same characters… kiddie pool reference has no place on the new and improved Patently-O, does it?


              anon, having borne the brunt from time-to-time (including since New and Improved) of considerably worse insulting comments from you (and no, I’m not going to go looking for them to come back and present you with any proofs – if you see fit, feel free to think me a liar instead), I am afraid I have little sympathy for the proposition that “same characters/kiddie pool” is an insult of such dire nature that the good professor should delete it.


                Thanks for the reply Mellow as it shows me that you quite missed the point of the post and instead fell to the old habit of looking to who made the post and reacting to the author rather than the content.

                You exhibit a critical problem with blog posting – perhaps intentionally, but more likely unintentionally.


                I’ve just been reading what are to me back-issues of PatentlyO and see that this statement “(including since New and Improved)” is completely incorrect.

                The New New and Improved only started as of September 10. Since I am pretty sure I have not visited here since then, there is no way anon could have insulted me subsequent to that time.



          Owen – in my experience it is totally different. Design patents rarely if ever even receive a rejection based upon prior art. The vast majority of computer related patent applications are rejected multiple times during the prosecution process. A large number (> 1/3) are totally abandoned and most of the remaining are substantially narrowed in order to differentiate the patent from the prior art.

    2. 1.2

      Ned, I think that is indeed where we are at, since the current design patent infringement test was established by an en banc Fed. Cir. decision [the Egyptian Goddess “ordinary observer” test] but the design patent obviousness test is required by both section 103 of the patent statute and the Sup. Ct. KSR decision and cannot validly be force-fitted to the former. But are they in practice, with a jury, the same claim scope? The former is definitely not in practice limited to the solid lines of the design patent drawings, and is not that supposed to be the “claim?”

      1. 1.2.1

        Paul, to be clear, the “ordinary obsever” test was not established in the Egyptian Goddess case, but rather the 1871 Supreme Court decision of Gorham v. White. The Egyptian Goddess decision merely did away with the “point of novelty” test which was the second part of the design patent infringement test established in the 1984 CAFC decision of Litton Systems v. Whirlpool.

        As to combining non-analogous art to show obviousness under section 103 of a design patent claim, that issue was addressed many years ago in the 1956 CCPA decision of In re Glavas. Whether the KSR decision has any adverse impact on that decision remains to be seen.


          Jim, that is the correct history of course, but this was not a history article and the much more recent and en banc Fed. Cir. Egyptian Goddess decision is more clearly currently binding, and of particular relevance for noting the distinction from validity testing that I quoted.

          As to the your note of a 1956 CCPA decision of In re Glavas as to combining prior art, I did not cite it simply because the subject recent Fed. Cir. decision did not cite it. They cited other equally old CCPA cases for that, ignoring KSR.
          As to “Whether the KSR decision has any adverse impact on that decision remains to be seen” that of course is the key issue raised in my article. I ask how can the Fed. Cir. legally justify simply ignoring KSR in design patent 103 cases, and I have yet to see any justification provided. I would like to see it.

      2. 1.2.2


        I don’t get your sentence:

        The former is definitely not in practice limited to the solid lines of the design patent drawings, and is not that supposed to be the “claim?”

        Everything, infringement and validity and scope, is determined by the claimed design, which is defined by the solid lines in the drawings.


          Indeed, I was just questioning in the above brief comment response [not my article] whether this very limited design patent “claim” scope is being adequately observed [or adequately judicially supervised] in actual design patent litigation, especially in an “ordinary observer” test? If it were would we not being seeing more summary judgments of non-infringement than 103, as for utility patents?


            Anecdotally, the percentage of litigated design patents which are held invalid for obviousness are less than 20%, while the percentage that are found non-infringed, usually on summary judgment, exceeds 60%.


              Thanks Perry, that is the opposite of what I had heard was the case for fully contested design patent suits, so perhaps this would make for another of the great statistical studies of Prof. Crouch?

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