Federal Circuit Further Eases Path for Obtaining Design Patents

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.

Slip Op.

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.



29 thoughts on “Federal Circuit Further Eases Path for Obtaining Design Patents

  1. 5

    In case anyone is still getting followup comments, I received a post-Surgisil Office Action from an Examiner. In my response to the Non-Final, I cited Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), and pointed out that the Examiner failed to address the language of the preamble of the claim, and that the prior art cited by the Examiner was not directed to the article of manufacture cited in the preamble of the claimed. The Examiner ignored addressing the preamble issue, and sent out a Final three weeks after the Surgisil decision came down.
    I left a message for the Examiner asking them if they were aware of Surgisil, and to reconsider the Final in view of Surgisil. I also left a message for their SPE.
    I got a voicemail from the Examiner that ducked the question and referred me to their SPRE. No response from the SPE.
    Anyone want to bet that the Office is going to try to ignore Surgisil?

    1. 5.1

      They will ignore it as long as possible, since it reduces substantially the field of prior art that can be applied in a 102 rejection. Was your rejection a 102 or a 103?. If the latter, you already have a non-analogous art argument. Surgisil allows a similar argument in response to a 102 rejection. You may have to take it to the Board, should be a simple brief.

      The PTO has a long history of ignoring unfavorable (to them) decisions of the Fed. Cir. (e.g., Maatita), while quickly adopting favorable decisions, e.g., International Seaway, in re Owens…

      1. 5.1.1

        “They will ignore it as long as possible”
        Thank you for the confirmation. The rejection was a 102 rejection.
        The PTO has a long history of ignoring a number of things, including explicitly determining the level of ordinary skill in the art.
        Any suggestions for squeezing admissions out of the Examiner/SPE during an interview that they are refusing to abide by Surgisil?


          Very little chance. Fact is group 2900 is probably trying to figure out what to do with Surgisil. It’ll take them awhile to do that. Don’t expect miracles in the interview. May as well go directly to the Board. Simple brief.


            Sadly, the last couple of times I’ve had to appeal to the PTAB has been where the Examiner admitted off-the-record that the law was on my side but that I would have to appeal (e.g., “we let the Board decide if there is enough evidence of secondary considerations”).

            Simple brief, as in:
            1. Cite the Surgisil case.
            2. [insert argument using the text of the Surgilsil decision].

            Thank you, Perry.


              Yes. Of course, you’ll start with reciting the facts of your case and a summary of the examiner’s position.

                1. By the way, does the AFCP 2.0 program apply to design applications? One of the requirements is that you amend an independent claim that doesn’t broaden its scope.

                2. That independent claim stuff is a killer for design apps. I suggest a Pre-Appeal Brief Request for Review instead. It’s limited to 5 pages and will be considered by 3 examiners, including the original examiner. I’ve been successful with that in the past. It does require a Notice of Appeal and fee, but what the heck. link to uspto.gov

                3. Thanks, Perry. I got a call back from the SPE. Bottom line: They acknowledge Surgisil exists, and told me to file an After Final response with arguments based on Surgisil which the examiner will consider it like any After Final argument.
                  My expectation is that they will send me an Advisory Action that punts everything down the road, and I will file that Notice of Appeal and Pre-Appeal Brief Request for Review.

  2. 4

    How is the shape of an object that is implanted in a body part, so that the shape of that body part is changed in a specific way, not a purely functional aspect of that object?

    1. 4.1

      A very good question.
      I’m sure Perry has a good answer to where case law draws the line where something becomes more functional than aesthetic, and is therefore not a protectable design.
      Changing the aesthetic look of the body part is a functional purpose, but how much of the aesthetic shape of the implant changes the aesthetic look of the body part?

      The angels are dancing on the head of that pin. How many? Well, the ultimate answer to that question is, of course, 42 of them.

      1. 4.1.1

        The lip implant performs a function, as does every single design that is granted a design patent. In fact, it must, since the requirement is that it is “an article of manufacture”. The question regarding functionality can be answered by considering whether there are other shapes that will perform substantially the same function. If so, then the lip implant is not monopolizing that function, which is the purpose of the functionality doctrine, namely to prevent a design patent from monopolizing functional features. It is not hard to imagine other shapes of lip implants.


          Thanks Perry – I note your choice of wording echoes a recent discussion on design patent law vis a vis the thrust of “substantial.”


          A lip implant of another shape would not perform the same function, since it would result in a different lip shape.


            …” whether there are other shapes that will perform substantially the same function“…

            Apotu – are you asserting that the “substantial function” is explicitly tied to the exact shape, that there can be NO other shapes that perform substantially the same function?

            What is the function that you think is with the implant?


            The “function” is not to form a particular lip shape, but rather to be a a device for implating in one’s lip no matter what the resultant lip shape. Obviously, there are many potential lip implant shapes that will perform that function, e.g., curved, serrated, a shape that is tailored to form a different lip shape, etc.

  3. 3

    Fantastic! I was making arguments based on Curver in response to two recent Office Actions, and this is more ammunition!

  4. 2

    Eventually someone is going to take a design patentability case like this [in which the Fed. Cir. ignores KSR and makes up a different test even though the very same 102 and 103 statutes apply] up to the Sup. Ct. for likely woodshedding.

    1. 2.1

      You keep on aiming for an angle Paul that is an oxymoron in itself and relies on a premise that is every bit as faulty as design patents being shoehorned into a utility innovation protection system in the first place.

      That “woodshedding” you want to see can never happen.

    2. 2.2

      This “prior art distinction solely by claim designated use” is even more legally illogical in view of the fact that Industrial Designers, who design the appearances of so many products, and are the proper 103 POSITAs for design patents, do so for wide ranges of products used for many different purposes.

      1. 2.2.1

        I think that Perry may not fully agree with you as to industrial designers being the proper Persons Having Ordinary Skill In The Art (and based on how the Courts have deemed what type of person it is that would be involved in any type of determining differences and/or confusion).

        I do know that Perry has quite often in the past taken you to task for your attempts to equate the utility aspects of patent law with the (ill-fit) design aspects of patent law. What you want (some type of one to one) is simply illogical to even attempt to have.

    3. 2.3

      Eventually someone is going to take a design patentability case like this [in which the Fed. Cir. ignores KSR and makes up a different test even though the very same 102 and 103 statutes apply] up to the Sup. Ct. for likely woodshedding.
      Sounds like a perfect case for the Supreme Court. Why bother with these 101 issues that are flooding the Federal Circuit, District Courts, and the USPTO — when you can address an issue that might be dispositive in a handful of applications over the course of a year. /s off

  5. 1

    It’s a two-edged sword. While the prior art will be limited in anticipation analysis, the flip side is that the scope of a design patent will also be limited – only analogous articles will infringe. That usually doesn’t matter since a design patentee is not generally worried about non-analogous articles (but see the Curver case). But the danger does now exist, as Dennis points out, that a design patent theoretically could be obtained on an article different from one in the public domain. Maybe the “original” requirement of sec. 171 will see a resurgence.

    1. 1.1

      Your penultimate sentence is a bit confusing. Are you saying, “a design patent could theoretically be obtained on a design for an article that (i) is a different article than an article in the public domain but that (ii) has the same design as the public domain article?

      Also, can you go into more detail on the infringement issue? Is it now the case that if A has a great design patent but no trademark or trade dress rights, I can appropriate A’s design straight out and (reproduce) use it on a different article, without consequence?

    2. 1.2

      ” Maybe the ‘original’ requirement of sec. 171 will see a resurgence.”

      Bringing to mind the anti-patent folk rushing to 101 because they couldn’t kill off claims with 101, 103, and 112.

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