by Dennis Crouch
On May 22, 2024, the day after the Federal Circuit’s en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court’s overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be “basically the same” as the claimed design, and (2) secondary references be “so related” to the primary reference that features in one would suggest application to the other. This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination.
Although the primary reference need not be “basically the same” as the claimed invention, the court still maintained that the obviousness analysis begins with a primary reference. The opinion though doe snot grapple with this issue in any depth but rather appears to assume that the analysis will begin with a primary reference, without thoroughly examining potential alternatives. In the decision, the court states: “In applying Graham factor one, the scope and content of the prior art, a primary reference must be identified.” The court then explains that the purpose of identifying a primary reference is to “protect against hindsight because ‘almost every new design is made up of elements which, individually, are old somewhere in the prior art.'”
The USPTO’s guidance generally tracks the Federal Circuit’s opinion quite closely. For the first Graham factor – determining the scope and content of the prior art – the memo instructs examiners that a primary reference must still be identified, but it need not be “basically the same” as the claimed design. Rather, it “need only be ‘something in existence’ . . . and ‘visually similar'” to the claimed design to protect against hindsight. The “more visually similar the primary reference is to the claimed design, the better positioned” an examiner will be to make a prima facie obviousness case.
The Vidal memo notes that the primary reference will typically be from the same field of endeavor as the claimed article of manufacture, “but it need not be, so long as it is analogous art.” And, like the primary reference, any secondary references must also be analogous art. “If a design is not analogous art, it may not be considered by the examiner in assessing obviousness.”
Importantly, the memo acknowledges the Federal Circuit did not fully define the test for analogous art for design patents, particularly how to determine if a reference outside the field of endeavor of the article of manufacture is “reasonably pertinent” to the problem being solved by the new design invention. The memo provides some limited guidance on this issue – stating that that examiners should consider the degree to which an ordinary designer would be motivated to look to other fields, and confer with their supervisory examiner if there are questions.
For the second Graham factor – ascertaining the differences between the claimed design and the prior art – the USPTO instructs examiners to compare the overall visual appearance from the perspective of an ordinary designer. There is no similarity threshold requirement.
For the third factor – the level of ordinary skill – examiners should consider the knowledge of an ordinary designer who designs articles of the type being examined.
And finally, the memo confirms that, where present, objective indicia of non-obviousness should be considered. The memo notes that existing guidance and case law in this area is still applicable.
Once these factors are considered, the examiner is asked to determine whether the claimed design would have been obvious using the following test:
If an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design, then the examiner should reject the claim under 35 U.S.C. 103 barring convincing secondary indicia of nonobviousness being of record.
In making this inquiry, the memo reiterates several points:
- The focus is on the “visual impression of the claimed
design as a whole and not on selected individual pieces.” - Any prior art references relied upon must satisfy the “analogous art” test.
- The motivation to combine might not come from any of the references, but there “must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”
- As one guide point for combining prior art, the memo note when two references are starkly different, it will be harder to establish a motivation to combine the two sufficient for a prima facie obviousness rejection. This comes straight from the CAFC opinion’s statement that: “Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context. Of course, it follows that the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.”
Overall, the USPTO’s approach closely adheres to the framework outlined by the Federal Circuit. By eliminating the “basically the same” and “so related” requirements, while still maintaining the use of a primary reference and analogous art requirement, the guidance allows for the more flexible approach demanded by the court and Supreme Court precedent like KSR and Graham.
I also like the USPTO approach in that it asks examiners to walk through the four Graham factors as part of its analysis, including the requirement of analogous art and evidence showing a motivation to combine/modify.
However, a few open questions remain that the USPTO will need to grapple with as it applies this new guidance. First is the unresolved question of how to determine if a reference outside the field of endeavor is analogous art. The “reasonably pertinent” prong of the analogous arts test seems difficult to apply in the design context, where the “problem” being solved is more ambiguous than in utility patents. The court and PTO left further development of this issue to future cases. Second, without the clear goalpost of a “basically the same” primary reference, there may be a wider range of potential primary references and more uncertainty around whether a particular reference really is the “most similar.” Examiners will need to carefully explain their reasoning.
From a strategic perspective for design patent applicants and owners, this decision and the USPTO guidance will likely make obviousness rejections somewhat more common, and design patents somewhat harder to obtain and easier to invalidate. Without the “basically the same” requirement, examiners have more flexibility to combine references.
By the way, did anyone notice that in relation to Factual Inquiry One, the memo says ” the design examiner should consider the degree to which an ordinarily skilled designer would be motivated to consider other fields” but the actual determination of skill level doesn’t come until Factual Inquiry Three. How can you determine analogousness for Factual Inquiry One without first doing Factual Inquiry Three?
It’s not clear that the factual inquiries must be performed sequentially.
Like the steps in a method claim unless there’s an indication that certain steps must be performed in a particular order.
You have a catch-22 at a foundational level.
To even separate out (in order to provide a possibility of considering ‘other fields’), your “call this legal fiction what you will” must be constrained to the explicit field of the applicant chosen ‘item of manufacture.’
The fun item to note here is that this “item 1” is a token gesture towards KSR’s “or solving the problem the inventor was concerned with — from the Utility Patent context, and is then turned around and immediately contradicted with a direction NOT to do this
Elsewhere, I have seen the term “FrankenArt.” My loose paraphrase of this would tie in the notion that real world Professional Designers (e.g., those ABOVE the legal fiction of “whatever you want to call the legal design fictional person), routinely deal with the “forbidden” item of ‘design in the abstract.’
Allowing ‘design in the abstract’ to “inform” the “call whatever design legal fiction” is analogous [sic] to treating the utility analysis of 103 art to be the same as “FrankenArt” cobbled-together-102-like art.
Paul wants to take a “it won’t be bad” outlook, and while that may indeed come to pass (or may not), one has to wonder why the outlook would not instead mirror some of the more inane 7+ Franken jobs.
“For the third factor – the level of ordinary skill – examiners should consider the knowledge of an ordinary designer who designs articles of the type being examined.”
In what way will Examiners ever have any understanding of the knowledge of an ordinary designer who designs articles of the type being examined?
So… “of the type” draws back into the equation (distinguishing “Na ked” designs (or designs in the abstract))?
Would “professional designers” who design ACROSS many “articles of MANY types be excluded as being beyond “ordinary?”
“an ordinary designer who designs articles of the type being examined”
I wishfully think “articles of the type” ties into In re SurgiSil in that the claim will limit the prior art to that type of article and the designer will be one who designs that type of article. Or at least, that’s my wishful thinking.
The same way utility examiners determine POSITA…
Not so sure about that.
There seems to be a lack of clarity in regards to “ordinary designer.”
The USPTO (for what that is worth) have directed this person to effectively be a non-professional designer** and merely an “an ordinary designer in the field of the article of manufacture.”
This is also tied to the Office direction of simply not permitting non-analogous art (which is different than utility considerations (as I have previously noted in at least “solving a problem” opens up any art that may inform resolution of ‘the’ problem).
**Every professional designer that I know is simply not constrained to design in any one field of article of manufacture, and use their know-how separate from ‘field of article of manufacture’ — literally, these professionals deal with “designs in the abstract.”
Such a view is contradictory to the Office directions.
“an ordinary designer in the field of the article of manufacture.”
Well, at least we have In re SurgiSil’s guidance that the claim can define the field of the article of manufacture. I’m sure we’ll see some eye-widening statements from Examiners that mash the square peg into the round hole of why a particular reference discloses a field/article of manufacture that is analogous to the claimed article of manufacture (and field thereof).
In the end, unless your client is willing to pay for an appeal, this will go on for years.
I have a concern that the courts will not respect this version of the Office guidance.
KSR simply did not provide the strictness vis a vis analogous arts, or restrained a PHOSITA to any such narrow (and applicants choose exactly how narrow) ‘Field of Article of Manufacture.’
Remember the pattern on a chair case….
One aspect of a problem here is the fact that designs simply are not allowed “in the abstract,” and yet KSR treats utility “in the abstract.”
See also my note on whether or not Professional Designers are overqualified to be Persons Having Ordinary Skill In the Design Arts (of Field of Article of Manufacture).
Hmmm – nope, PHOSITDAFAM is too much…
“PHOSITDAFAM”
Gesundheit.
Another patent attorney article questioning the impact of LKQ v. GM [after noting the preceeding 20% increase in design patent applications]:
link to ipwatchdog.com
The USPTO dragged its feet on when the SurgiSil decision came out but this updated guidelines came out at warp speed. Maybe because one worked against Examiners and for Applicants while the other supposedly does the opposite.
Are you shocked?
What else would you expect from the InNOvation Office!
Thanks again Perry. I have one more quibble or question re your views on whether there will be a substantial reduction in the number of design patent applications after this case? I don’t see why? The costs of obtaining and maintaining design patents should be cheap enough for many clients to continue to file them, and still be unlikely to get into 103 argument costs unless and until the design patent is actually asserted. Isn’t their PTO filing fee only $750 even for a large entity? Cannot a good experienced secretary or admin do most of the filing work if told by and reviewed by a design patent law savvy attorney or agent as to what drawings to order, what lines to be solid or dashed, what elements to split into separate applications, and what title to give it? There are no specs or claims to prepare. There is the expense of the drawings, but that is now done digitally. Design patents do not have any maintenance fees at all over their entire 14 year term. Furthermore, as patentable designs are on or integral articles of manufacture, they do not have the option of trade secrecy protection that some utility patents have.
Paul, sorry, but your post sounds like a true utility patent guy who has probably never prepared and filed a design patent application. Except for the lack of maintenance fees and availability of total profit damages under 289 (which you did not mention), your post is total, total, hogwash.
In fact, it’s typical of how utility patent guys look down on design patents as the black sheep of the family. It may have been justified in the 80s, but not now. Ask Samsung who forked over $500m to Apple. Do you think a secretary prepared and filed those applications?
Full disclosure: I used to be one of those utility patent guys, back in the 80s, who recommended design patents as a booby prize if the utility patent search came back negative. Then, along came Avia v. LA Gear, I flipped, and the rest, as they say….
Perry, I was merely providing another good reason [lower overall cost] why the number of design applications need not shrink that much. I knew it would not be popular. But note that I clearly said: “if told by and reviewed by a design patent law savvy attorney or agent as to what drawings to order, what lines to be solid or dashed, what elements to split into separate applications, and what title to give it.”
None of our secretaries, legal assistants have ever prepared design applications, even under the tutilage of an attorney. Only attorneys, interacting with the draftsman, draft claims and spec & appendix, etc. The most a paralegal might do is prepare documents, e.g., Dec., PoA, IDS, etc.
So … computers can “conceive of” and draft verbal descriptions of utility inventions *on their own* … but an educated human can’t draw a non-obvious design using a computer?
LOL
Talk to Dennis, Perry! He can help you!
Your use of “can” and “can’t” is NOT the same as what Perry is talking about.
It is not a ‘capability’ issue for him.
But you knew that, right?
Thank you reminding everyone that design patent “attorneys” and “experts” are the most overpaid people on the planet.
My pointing out your erroneous h1j@ck leads you to that strawman?
You be you.
What no pouty face, Snowflake?? So you know Prophet must be right.
Your new €hoi€e is already well beyond $tale.
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“Flexible approach.”
Welcome to our utility patent world, design patent applicants + holders.
Our frustrating world.
I’m already on blog-record as betting that the very small percentage of 103 rejections of [all to easy to get issued] design patent applications is not likely to suddenly increase after LKQ v. GM. How many design examiners are going to have time to dig up and apply prior art from what may or may not NOW be considered prior art or combinable prior arts? However, I would like to be proven wrong on that, and perhaps these instant new Guidelines may help a bit?
P.S. Since Dennis is using that same design patent drawing of an entire car again, I suggest it also be used as a teaching example of what NOT to do in a design patent application. With so many different SOLID lines shapes of so many different different parts of that car in the same drawing the claim scope is so narrow it would get instantly allowed but never infringed.
?
Since when is examination (under the law) acceptable to be constrained by “I didn’t have time to do my job” from an examiner?
“Since when is examination (under the law) acceptable to be constrained by “I didn’t have time to do my job” from an examiner?”
Since forever. But it’s reached beyond a fever pitch now. Over half the AU over here is burned out (in final stage or near there). And I’ll be fired within a month if I don’t start just allowing things. To be replaced by someone who will. no lie no lie famalam.
Let me call B$.
There is no “Allow Allow Allow.”
Further, if there were, that would be as bad as “Reject Reject Reject.”
Further, your “Since forever” is a gross dereliction of the law.
My clients do not pay for “x” amount of examination time. My clients pay for a full examination – under the law.
Do not make your problems with your internal metrics to be my client’s problems.
If clients really do think they are paying for or getting what they think is a PTO “full examination” of every patent application they file, they must be getting some very erronious legal advice from somebody.
Really Paul?
You really should rethink that.
(How long has it been since you abandoned your registration number?)
“My clients do not pay for “x” amount of examination time. My clients pay for a full examination – under the law.”
Fu ck off. The full examination is whatever the bean counter says it is.
“There is no “Allow Allow Allow.”
Yeah there definitely is now in the modern day.
Right back atcha 6.
(You do know of course, that I am correct)
No, you’re not correct. You’re mentally ill.
Oh please, try to do more than the Malcolm style misaimed ad hominem.
(And think back to all of your changed positions that now reflect my holding your feet to the fire – as you slowly learn, you adhere more and more to what I have taught you)
We’re still waiting for that imaginary registration number, Snowflake.
Nobody is fooled.
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I told you how to confirm this.
It is beyond silly to want some type of ‘outing.’
Who did you tell “how to confirm this, Snowflake? And what is “it?”
Told you and “it” is your present fallacy.
Duh.
Nobody is fooled, Snowflake.
link to cdn.patentlyo.com
Perhaps – just not how you think.
As usual.
Since that is a regular complant about patent examiner examinations, ask how many patent attorneys only being paid X$ [equal to only Y billing hours even for the lowest associate] by a client for preparation of a patent application will regularly spend YYY UNbillable billing hours to prepare a much more thorough patent application?
Also ask how many clients these days pay for a pre-filing prior art search [if any] that is better than the mere few hundred dollars the PTO charges for their prior art searches?
The time and numbers pressures on PTO examiners for examinations leads not only to allowances of patents that cannot survive IPRs, it is also a contributor to the increase in continuations and RCE’s by clients and their attorneys who were not anticipating allowances of broad “shotgun fire in the dark” claims their applications were filed with absent pre-filing prior art searches.
“The time and numbers pressures on PTO examiners for examinations leads not only to allowances of patents that cannot survive IPRs, it is also a contributor to the increase in continuations and RCE’s by clients and their attorneys who were not anticipating allowances of broad “shotgun fire in the dark” claims their applications were filed with absent pre-filing prior art searches.”
Right which leads to still further nonsense. On and on.
Allow, allow, allow actually makes sense. Since 2012 there are proceedings for the just, speedy, and inexpensive invalidation of patents that were issued improvidently. The PTO has long had quality “review” but in the present schema the PTAB serves as quality control.
Interesting posit Pain. So then let’s go to a no-exam patent registration system . . . while keeping the PTAB in place . . .
With all the examiners being moved over to the PTAB.
What’s not to like?
(With Vidal taken to throwing stuff against the wall to see what sticks, who knows?)
It was Secretary of State Thomas Jefferson (aka the first patent examiner) who examined patents and felt so overwhelmed that he caused the US to go to a patent registration system but that did not last long.
based history bringer upper.
But yeah, history repeating itself on that front. Doesn’t actually have to, but whatever pressures are on the deciding people in the PTO that decide how much effort is to be expended per app have caused them to default to yesteryear numbers forever. As the arts have just gone into the stratosphere in complexity etc. There’s really no reason for this to be happening overall other than poor leadership.
Do not overlook the strong resistence to increasing the low US PTO examination fees by the very people that complain about its quality and ignore the huge increases in searchable prior art.
And do not 1gn0re the quantum leaps in effectiveness from the days of looking in paper shoes.
You are aware as well that fees are not set by, or even influenced by, practitioners, right?
How long ago did you abandon your registration number again?
At least he had a registration number, Snowflake. What’s your imaginary number?
And Snowflake don’t do the pouty face when you don’t answer.
Thank$$ for your €hoi€es.
Are the emoticons upsetting you, or is this just your latest game?
By the by, “pouty” is not close to the emoticon.
“Do not overlook the strong resistence to increasing the low US PTO examination fees by the very people that complain about its quality and ignore the huge increases in searchable prior art.”
Nah I get it man, apparently it’s not just lawyers on behalf of clients, but it is a lot of what we in heavy industry would call “light industry”. The light industry needs a broad front door for their filings on the cheap and just aren’t that worried about the other things as much. As far as I’ve heard near all the corporations that work in my art are on board with higher fees for filing (+search) at least and would at the least like more search. But for whatever internal reasons they will not go a la carte.
you are in heavy industry? x’plain.
Show us the pouty face again!!! Just once more!! Puuleeeze???
Your latest choice is already getting dull.
“…and would at the least like more search.”
Why do the self-proclaimed experts at searching always claim they need more time to search?
“Why do the self-proclaimed experts at searching always claim they need more time to search?”
Is this a joke? Do you know anything about what is even happening?
The bottom line is, you need a “floor” that is considered by the authority in charge (mgmt, both upper mgmt and front line mgmt) that is “good enough”. Back back in the day, they really wanted you, especially new people, but all people to look until you find either the invention, or something to address the claim, and truthfully until you’ve exhausted basically all remotely relevant search areas (a whole subclass or subclasses minimum, but keep in mind those subclasses were pretty small for the most part until mid 90’s). This is a pretty/very high “floor”. As the art grows that last part grows as well (forever basically). Mgmt (upper level) addressed this in the 90’s by switching to a “word search” as being the floor that is “good enough”. However, holdouts in the front line managers still tried to force examiners to do the old floor for a decade+ (not without reason, they figured it could be done, and that is a better quality job, and they didn’t want people just doing a terrible job easily). And they’d basically threaten you with “lolinsubordination” (conduct issue) if you don’t do the search the way they want (rather than the official training way, just a word search). Note as long as you tell them to their face that you’d do it, but then don’t do it, it’s easy to fake them, which they didn’t like and so they’re very sensitive about. Further, upper mgmt halvsies supported this practice (always with plausible deniability where they could point to their official trainings to cover what the supposed super easy to reach floor was).
Fortunately most near all of the office (front line managers included) has now switched to a word search and/or cross reference search between sub-groups, occasional a whole sub-group search or a few of such. Along with some NPL searching, that’s a very generous search these days.
However, to answer your question, it’s that last part where you’re searching until you exhaust all plausible search areas that is the main reason a professional searcher will always need more time, as going through all of those can generally take forever. You have to cut it off somewhere. But if you’re truly going to search then the sky (ever more obscure sources), not your artificial cut off, is the actual limit, so to speak.
6, wouldn’t those shenanigans be fodder for your ‘union,’
Also 6, hasn’t the Office ‘embraced AI’ and fed all that NPL stuff and most all (excepting non-published apps) of the patents and published applications into the AI?
Wouldn’t this then reduce searching to minutes?
“Wouldn’t this then reduce searching to minutes?”
1) I had no idea you were so incredibly uninformed.
2) You incredibly gullible about the current and near term future capabilities of “AI”. But that was already apparent.
Meh, haven’t used it much, and the Office certainly isn’t all that forthcoming about just how it is using it, so the question is a bit broad on purpose.
This does not support your attempted rebuke in the least.
Maybe try an answer instead of the misaimed 1nsult?
You left out the interference search, 6.
“Do you know anything about what is even happening?”
Lulz
Based on my 34+ years of examining and practicing, I know exactly what is happening. I know hours/BD could be quadrupled, quintupled, even octupled, and it wouldn’t increase “examination quality” or “patent quality,” whatever you want to call it, one bit, however you want to measure it.
You know it too.
Saying that patent quality wouldn’t even go up marginally with an octupling of examination time demonstrates you to be so fatalistic and alarmist as to render your opinion nearly as worthless as the guy who believes 2024 AI reduces searching to a few minutes.
How about the guy who conflates “asserts” and “asks?”