by Dennis crouch
In re Surgisil, LLP, — 4th — (Fed. Cir. 2021).
This is an important design patent decision that substantially narrows the scope of prior art available for anticipation rejections in design patent cases. The result is that it should become easier to obtain design patent protection. The decision is only about 600 words long — fewer than may writeup about the case.
My children have a variety of paper stumps that they use for smoothing and blending their pencil drawings. The first image below shows a typical paper stump that artists have been using for many decades. The second image shows the design for Surgisil’s article of manufacture that it is attempting to patent (design patent). I also recall being fascinated by double-sharpened pencils that you can see in the third image.
Although the three are basically identical in shape, Surgisil still believes it should be able to obtain a design patent because its patent is directed toward something different, the “ornamental design for a lip implant.”
The USPTO examiner rejected Surgisil’s claims and the Patent Trial & Appeal Board affirmed. The PTAB held particularly that for anticipation purposes, “it is appropriate to ignore the identification of the article of manufacture in the claim language.” Further, although these might not be analogous art, “whether a reference is analogous art is irrelevant to whether that reference anticipates.”
On appeal the Federal Circuit reversed and instead held that the Surgisil’s claim language limited its invention to a design for “lip implants.” As such, prior art directed to drawing stumps and pencils do not anticipate a lip implant. The court explains:
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.
The decision here goes a bit further than Court’s 2019 decision in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019). Curver Luxembourg held that a particular claim was limited to the wicker pattern applied on an the article of manufacture recited in the claim (a chair) and thus did not cover the use of the same pattern on a basket or other non-claimed article. The PTO had attempted to distinguish that case as applying to the particular situation where the drawings do not actually show the claimed article of manufacture. In particular, the court held we “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.” The drawing in Curver was an abstraction showing only the wicker design, and so the claim was important to tie the design to a particular article of manufacture.
The terse Surgisil decision did not attempt to explain why this case extends beyond the language of Curver.
For many years, the USPTO has followed the same policy — the claimed article does not make any difference for anticipation purposes. That rules stems from an old CCPA case known as In re Glavas, 230 F.2d 447, (CCPA 1956).
It is true that the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases.
Id. One problem with Glavas is that it was an obviousness case and so the statement above is dicta. The court previously recognized this dicta in Curver. The court also suggested that Glavas had been implicitly overruled by Egyptian Goddess. In Egyptian Goddess, the en banc court held that the ordinary observer test applies to anticipation analysis. In that regard, an ordinary observer would not be likely to confuse a sharpened pencil with a lip insert. (Note, this last sentence is implied by the court in Curver, but not expressly stated).
Surgisil is in some tension with precedent holding that the claim scope should be limited only to ornamental features. See, e.g., In re Zahn, 617 F.2d 261 (CCPA 1980) (“[35 U.S.C] 171 refers, not to the design of an article, but to the design for an article.”); OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (design patent scope is limited to the ornamental features). The appellate panel here did not address that argument presented by the USPTO on appeal.
Generally, the USPTO will see this case as a major change to anticipation analysis. In the end, it will make it even easier to obtain design patents — and seemingly permits someone to obtain a design patent by grabbing a design that is known in the art and applying it to a new article of manufacture.