Federal Circuit Rejects Patenting Designs “in the Abstract”

by Dennis Crouch

Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019)

The district court dismissed Curver’s design patent infringement lawsuit for failure-to-state-a-claim.  Asserted U.S. Design Patent D677,946 is titled “Pattern for a Chair”
and claims an “ornamental design for a pattern for a chair, as shown and described.”

Note from the figure above that the drawings (and thus the claims) are not dirercted to a whole chair, but only a pattern that apparently could be used on a chair.

The accused product is not a chair but instead a basket that (arguably) uses the same pattern.  The district court looked to the “for a chair” limitation in the claim and made the easy conclusion that a basket is not a chair. Before moving forward, I’ll note the famous Van Gogh chalk drawing titled “woman sitting on a basket with head in hands.”  I wonder if she just tried to reconcile a set of Federal Circuit precedents.

On appeal, the Federal Circuit has affirmed — holding that claim language specifying a particular article of manufacture (a chair) limits the scope of the design patent in cases where “the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”

In this case, the patentee essentially asked for the Federal Circuit to construe the patent as covering a disembodied design that could be applied to any article of manufacture.  In rejecting that argument, the court first noted that it “has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompasses every possible article of manufacture to which the surface ornamentation is applied.”

Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se, we hold that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

Slip opinion.  As the court notes, PTO design patent practice bars patentees from obtaining coverage for an abstract design.

The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.

37 C.F.R. § 1.153.  This provision has not been challenged at the Federal Circuit (and this litigation appeal does not allow for a direct challenge of the PTO regulation).  However, the court suggests that the limit is also good policy — citing Prof. Sarah Burstein’s work on-point:

If we adopted a design per se rule, “the title and claim language would provide no useful information at all.” Sarah Burstein, The Patented Design, 83 TENN. L. REV. 161 (2015). In contrast, tying the design pattern to a particular article provides more accurate and predictable notice about what is and is not protected by the design patent.

Id.

= = = =

The Samuelson Clinic at Berkeley Law filed an amicus brief on behalf of the Open Source Hardware Association. The brief argues that allowing patenting of designs in the abstract would deter innovation.

= = = =

Although the design patent here was ‘examined,’ the examiner did not issue a single office action rejection.  Both the examiner’s search and references cited by the applicant focus on material for the backing or seat of a chair.

= = = =

Note here that the inventor has patented a number of baskets, and Curver sells baskets using this patented design.  But, Curver did not patent its basket with the design.

42 thoughts on “Federal Circuit Rejects Patenting Designs “in the Abstract”

  1. 6

    There is also considerable tension of the holding here with the fact that a design patent must be for an ornamental effect that is separable from the object to which the effect is used with (along the lines of the “what” being protected is the non-functional characteristic of the [putatively separable] article of manufacture).

    The item (scope) of coverage IS the “visual ornamental characteristics embodied in, or applied to [noting that to ‘apply to,’ IMplies separability] an article of manufacture” (See the USPTO definition of a design), at the same time that THAT implied separability is expressly negated with (emphasis added): “A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone.”

    That self-conflict aside, this case really appears to be all about how general (or how specific) the “article of manufacture” need be specified.

    As I note below, stools ARE classified as a type of chair — other types include, but are not limited to: armchair, recliner; round chair, loveseat, accent chair (which includes club chair, wingback chair, Bergere chair, Lawson chair, barrel chair, slipper chair, ottomans, chesterfield chair), dining chairs (which include bar stool, wishbone chairs, ghost chair, side chair), office chairs, outdoor chairs (which include folding chairs, chaise lounge chairs, wicker chairs, hammocks), children’s and baby chairs, and something called gaming chairs.

    All of these courtesy of an architect website that came up in a google search.

    One may rightly wonder why “chair” is somehow more proper than “furniture.”

    One may easily envision a desire for a SET of furniture to have matching design traits, so one should wonder WHY would not “furniture” have been perfectly fine in the original application.

    Clearly, this type of “climb a rung” is entirely proper (and entirely commonplace, even among the ‘professed’ choosers of the claim option of “objective physical structure,” since those folk recoil at the notion of singular objective physical structure).

    1. 6.1

      The issue of “breadth does not equal ambiguity” also overlaps with another (and decidedly different) IP (in the general sense of that phrase) of Trade Dress (and possibly trademarks).

      While a purveyor involved with the larger field of “furniture” may well want to be known for several different lines of products (said lines coordinating chairs with for example tables and other household accessories), they may want a particular design to be associated with their company (and the putative “level of quality” from — and thus identifying — that company).

      1. 6.1.1

        Fine, just file more than one design patent application at the same time for the more than one products planned with the design. [Both the prep and prosecution are cheap.]

        1. 6.1.1.1

          That does not address the issue.

          The issue is a “turtles all the way down” type of thing.

          If you apply your “solution” to the next level of turtles down, would at 37 applications need be filed to cover the 37 types of chairs (number comes from the architecture website noted above at post 6).

          … and that “37” multiplier is just for “chair,” AND just for “one small rung down.”

          If you don’t address the underlying issue, ANY of your “it’s just easy” suggestions can easily be shown to be rather insufficient.

  2. 5

    Van Gogh? How about Wittgenstein:

    Our word “chair” only has a definite meaning in the contexts that we are familiar with. In a less magical vein, we can also imagine a flat, angled plank of wood that has a small notch for resting. We can sit on this object and rest our back against it, but do we call it a chair? Not necessarily. The word “chair” might seem to have fixed meaning because there are a number of objects that we unhesitatingly would call chairs, but there are also borderline cases where we may or may not want to call an object a chair. To a large extent, whether or not we call an object a chair depends on the context.
    link to sparknotes.com

    In order to keep some semblance of reason alive and well in patent law, and keep it from becoming a basket case (heh), the decision properly limited the universe of potentially infringing articles to what Wittgenstein would term “objects that we would unhesitatingly call chairs”.

      1. 5.1.1

        Yup. One search result I found touts him as The Fun Philosopher. ☺

  3. 4

    This opinion makes me wonder what would happen if the facts we changed a bit – if the claim remains the same, but the basket, instead of being the accused product, is the asserted prior art. Would the “chair” claim element save the patent?

    1. 4.1

      It wouldn’t hurt but I’m not sure it would save the day. What would help is a drawing maybe with one of these so-called “chairs” shown as a dotted line, and showing how this pattern relates.

      That’s the b.s. thing about this claim, really. Is this design a non-obvious design? Non-obvious to put anywhere on a “chair”? Or what? Nobody has a clue.

    2. 4.2

      Re: would the “chair” limitation distinguish a basket with the same design?
      It would if the Fed. Cir. always applied their same 103 the same way it does for patents other than design patents, since the same patentable “ornamental” aspect would be the same on both. But they do not.

      1. 4.2.1

        Oops, that should be “would not.” And note 3 below is only about 102 full anticipation, not 103.

        1. 4.2.1.1

          … which is reflected in my reply at post 3.1

  4. 3

    A (huge) silver lining to this holding for design patent applicants may be that—in order for it to be reconcilable with the US Supreme Court’s maxim of “that which infringes, if later, would anticipate if earlier” (Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)) and the Federal Circuit’s own recognition that “the same test must be used for both infringement and anticipation” (Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009))—the USPTO should no longer be able to cite prior art designs that are applied to very different identified articles from the one identified in a pending design patent application during examination of that application.

    If, indeed, the “same test must be used for both infringement and anticipation,” and this Curver opinion holds that design patent claims/titles limit the enforceable scope of a design patent during an infringement analysis, then it must also be true that old, unrelated art can no longer be used to reject a design patent application on anticipation grounds.

    1. 3.1

      Does that “save” you in the obviousness situation? (Given that it is pretty much obvious to apply any design to any manufacture on a near de facto basis)

      1. 3.1.1

        I’m not sure I’ve ever seen a case discussed here regarding the obviousness of a design patent claim.

    2. 3.2

      Silver lining, perhaps, based on the cited case law. The problem is that International Seaway – and its reliance on Peters v. Active – was wrongly decided when it comes to design patent anticipation, and the Federal Circuit (and USPTO) blithely continues to rely on (and apply) it; witness the Curver opinion. See

      link to designlawgroup.com

  5. 2

    Before CHEN, HUGHES, and STOLL, Circuit Judges.

    Opinion by CHEN, Circuit Judge

  6. 1

    Would any of these been allowed:

    A pattern for articles of manufacture;

    A pattern for plastic articles of manufacture;

    A pattern for household items;

    A pattern for vacuum molded or stamped items?

    1. 1.1

      To answer your question with a question (since Design Patent Law is inanely attached to Utility Patent Law), would any of your claims meet 35 USC 112?

      (keeping in mind of course, that breadth is not the same as ambiguity)

      But more to the point for this decision, how do you distinguish your suggested claims from the lack of particularity of the case? In other words, does not this case already give you an answer to your question?

      However, there are (perhaps) more interesting wrinkles here in that the applicant (also perhaps unwisely) acquiesced to an objection during prosecution and accepted an examiner’s suggestion of “chair” for “furniture.”

      The as-filed “limitation” was furniture as opposed to “chair.”

      Furniture, while clearly being a “rung up the ladder of Abstraction” is still more particular than “item of manufacture,” (furniture is certainly different than ice cream scoops or an airplane or a dog collar, or any number of other manufactures, and while “furniture” may well be said to include “chairs,” one has to wonder if “chair” PER SE was actually possessed at the time of filing — say, for example, in contrast to any OTHER type of furniture.

      Note as well that in discussions of “rungs on the Ladder of Abstraction” that “chair” itself is NOT particular in so far as designating an “objective physical structure” (backless chairs, single or multi-legged chairs, and the like come to mind).

      1. 1.1.1

        “On a chair”.

        Anywhere, on any thing that could be called “a chair”?

        How does cr @p like this even get out of the PTO? How is it examined? Against what database? What are the queries?

      2. 1.1.2

        … by the way, the Van Gogh prior art selected by Prof. Crouch shows that “chair” is itself very broad (and evidently, includes some baskets).

        1. 1.1.2.1

          Does it show that? Surely not. The drawing is entitled “…sitting on a basket….” which tells me that “chair” is not an exhaustive list of things one can sit on. Did Sitting Bull sit on a chair, or was it, rather, a horse? If van Gogh were to draw Sitting Bull on his horse, bareback, would you, anon, be telling us that he is shown sitting on a “chair”

          A horse is not a chair and neither is a basket a chair.

          While a chair with a seat cushion or backrest cushion (or both) exhibiting the Curver pattern might be new, the pattern itself is notoriously old (by Curver’s own use). Adding “for a chair” contributes no novelty because “for” can only mean “suitable for”, and the notoriously old repeating pattern is self-evidently “suitable” for a seat or backrest cushion of a “chair”.

          It seems to me that this designation “abstract” is getting out of hand. To a man with a hammer, everything is a nail. To a judge with this new “hammer” in his toolbox, everything before him is “abstract”.

          1. 1.1.2.1.1

            MaxDrei,

            You say that “chair” is not an exhaustive list of things one can sit on, and provide for an example a horse (for Sitting Bull).

            Sure, I can “buy” that a horse is not a chair, and that there may well be many things that one can sit on that are not chairs.

            But does the upside down basket merit that distinction?

            Clearly, a basket as normally orientated for its original purpose may well NOT be indicative of “something to sit on” and for that reason may fall out of consideration as a chair.

            But just as clearly, the act of inverting the basket (and thus, making the item NOT fit for its original purpose) may WELL be indicative that it has become a chair.

            Further, you postulate that a chair MAY include “ chair with a seat cushion or backrest cushion (or both),” HOWEVER my original post CLEARLY provides that the beingness of being a chair simply does not require a seat cushion or backrest cushion (or both) — so your counter example in this regard is stillborn and of no weight.

            So to your assertion of “a basket is not a chair,” the reply is “Not so fast, as a basket may clearly BE a chair, and your ‘surely not’ is just not so sure.”

            … and if one really wants to “get obtuse,” I would also postulate that a horse (or the bareback portion thereof) may certainly be made into a chair. I suppose some Western-mythos loving aficionado may already have such items (although saddle manufacturers would surely be aghast, perhaps there is such a chair that may function as a training mechanism.

            1. 1.1.2.1.1.1

              Ah, I see. The category “chair” is extensive enough then to cover a Big Box of Protons, Neutrons and Electrons, as long as it is big enough that its contents can be made into an object on which one can sit.

              A Ladder of Abstraction is all very well, but not one that long.

              My personal conception of a “chair” does not require it to exhibit legs or sport any cushions. But it has to have a surface to sit on, and another one on which to recline (otherwise it is a mere stool, and a stool is not a chair, is it).

              Of course, context is everything. In the game of Rugby Union, for example, a dominant pack is said to give the No 9 “an arm-chair ride”. Nevertheless, unhesitatingly to call the pack of eight forwards a “chair” is more than a stretch.
              link to en.wikipedia.org

              1. 1.1.2.1.1.1.1

                A stool IS a particular form of chair, so your desire to have a support section for the back is NOT necessary (even as there are stools WITH such elements).

                And we need not go anywhere near the Big Box for the reach of that ladder.

                1. Interesting.

                  Except for the fact that that definition is not accurate.

                  There simply are types of chairs without backs.

                  I have had two such chairs: a “kneeling chair” and a “ball” chair. Look up “Dragonn Kneeling Chair” and “Safeco Zenergy Ball Chair.”

                  Further, your post does not reflect the fact that stools may well have such a “back” feature.

                  I give you credit for supplying a dictionary, but alas, such is just not sufficient.

                  (further still, if you google names or types of chairs, stools ARE listed as a type of chair in the “related search” feature.

                2. Another Link:

                  link to amazon.de

                  this time To Amazon’s enormous range of products in which one sits on a ball. Some (including your Zenergy device) lack a backrest and are called stools. Only for those that feature a backrest does Amazon award the name “chair”.

                  That Zenergy’s own video chooses to call its stool a chair is explainable with the logic that “chair” sounds like a higher grade seat than a mere “stool”.

                  Amazon confirms my dictionary definition. If it lacks a backrest, it ain’t a “chair”.

                3. See the architectural list above — sorry MaxDrei, but chairs include chairs with no backs.

                  That’s just a fact.

                  As is the fact that some stools have backs — I notice that you have yet to acknowledge this point…

                  These things are facts NOT because I am saying so; but rather; I am saying so BECAUSE these are the facts.

                4. Additionally, given your preference for “being provocative” and hurling a certain type of matter against walls to see what sticks, I would have thought that you would have embraced the fact that stools are a type of chair…

        2. 1.1.2.2

          No kidding, Sherlock. What a coincidence!

          1. 1.1.2.2.1

            Ah Malcolm, you are quick to agree, but look at MaxDrei who was even quicker to disagree.

      3. 1.1.3

        As noted, anyone ever doing design patenting in the past 60 years at least should have known that the descriptive words for a subject article of manufacture can be a claim limitation.

        If the prosecution history here was changing “furniture” to “chair” [with no such disclosure in the original application] why is that not also a “new matter” 112 issue? Would utility application examiners allow that? Or allow changing “transportation vehicle” to “motorcycle” in the claims with no suggestion of motorcycle anywhere in the application as filed?

        1. 1.1.3.1

          There is nothing resembling “examination” of design patents at the PTO, other than checking that certain formal requirements are met.

          This is why Kappos told everyone how awesome and important design patents would be for rich slick grifters! It’s an open playground once you pay the modest admission fee. After that, just back up the claim with enough j-e-rk attorney “muscle” and let the extorting begin! Yay! Promote the progress!

        2. 1.1.3.2

          Is it your position that one of ordinary skill in the art would not have known furniture included chair?

          1. 1.1.3.2.1

            Les,

            That is not the right question. Certainly it is known that “furniture includes chairs.”

            But “furniture” was found to be unacceptable, and was requested to be changed. So at the time of filing, possessing “furniture” did not mean anything. The problem was in the explicit “stepping down a rung” and choosing the particular rung of “chair” — as I noted, this choice being in contrast with ANY OTHER choice of type of furniture that would also (unquestionably) be known to be included, and yet, is now expressly NOT possessed at the time of filing (in essence, the choice of the particular rung ‘down below’ DISclaims all the other possible rungs, and effectively makes it so that the inventor did not possess all those other possible rungs.

            PS – I am NOT saying that the resultant logic of this ruling HAS to make sense — all that I am doing is showing the necessary ramifications OF that resultant logic.

            Here, importantly, merely “includes” is not enough.

            And if you think it does, then how does a claim of “A big box of protons, neutrons and electrons” grab you? SURELY, ALL things EVER that meet the statutory categories of any the hard good items are “included” in such a claim. Does that mean that I possess all and any such configurations?

          2. 1.1.3.2.2

            Re: “Is it your position that one of ordinary skill in the art would not have known furniture included chair?”
            No, but claim narrowing to an undisclosed species is confusing a test for 103 as prior art with the test for specification 112 enablement and new matter.

            1. 1.1.3.2.2.1

              What does “enablement” even mean in the design patent sense?

      4. 1.1.4

        “But more to the point for this decision, how do you distinguish your suggested claims from the lack of particularity of the case? In other words, does not this case already give you an answer to your question?”

        I haven’t read the case, just the article above. I understood the article above to say that the court ruled the way it did because the claim said chair and therefore did not encompass basket.

        I don’t think article of manufacture is so broad as to cover the design in the abstract. Though it may be too broad for other reasons…. maybe manhole covers…

        So, no. I don’t think the case answers my question.

        1. 1.1.4.1

          I don’t think article of manufacture is so broad as to cover the design in the abstract

          Why?

          That’s not a pedantic question.

          Why is “article of manufacture” NOT something that elevates the design TO BE that “design in the abstract?”

          Since “article of manufacture” will necessarily be MOST ANYTHING (and certainly anything to which the hand of man will ‘attach’ as far as legal meaning), what then distinguishes the “design in the abstract” from the “design for most anything?”

          GIVEN that in the present context, design may NOT be a natural thing (leastwise a design that may be found in a design patent claim), the one set becomes a mirror image of the other set. You say that you see a difference. Can you explain that difference that you see?

          1. 1.1.4.1.1

            If “article of manufacture” means anything, then why doesn’t the statute say “anything.” If the design in the abstract were encompassed, then doodling it on a piece of paper and printing it on paper for a book cover would be infringement. I don’t think those rise to the level of articles of manufacture. However, if a roll of paper were punched with the pattern, for place mats say, we may have crossed the line.

            Anyway… what about plastic articles of manufacture, which is clearly what these guys make and that clearly does not encompass everything does not cover, for example wicker place mats.

            1. 1.1.4.1.1.1

              Les,

              The statute says what it says, and it is in the context of what ALSO the statute says so far as what is necessary to pursue a design patent.

              In your “hypo,” a book cover is most definitely an article of manufacture. Just as much as a place mat.

              As to your “well what about plastic articles of manufacture,” I am NOT dissuading you from your viewpoint, but instead, I am trying to guide you to what your viewpoint may BETTER indicate. See my post above at post 6 (vis a vis “That self-conflict aside, this case really appears to be all about how general (or how specific) the “article of manufacture” need be specified.“) as well as my last paragraph of post 1.1.

              The plain fact of the matter is that Ladders of Abstraction contain MANY rungs. In the instant case, the rung between “furniture” and “chair” seems arbitrary (and perhaps even capricious), and the applicant most likely should not have agreed to it.

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