Application No. 29/852,171 | Issued June 3, 2025 as D1,078,041
In this week’s featured prosecution, we examine the successful traversal of an obviousness rejection in the design patent application for a grooved mandrel for producing an embolic coil. The case illustrates how design applicants can strategically make title changes and use LKQ v. GM to overcome rejections based on non-analogous secondary references.
Background
The claimed design is directed to a mandrel used in shaping embolic coils. The original title was “Mandrel.” The design features a rounded top end, arcuate overlapping grooves, and a nearly closed loop at the opposite end. During prosecution, the Examiner issued multiple rejections, including under §§ 112 and 103, and raised drawing and specification objections.
Obviousness Rejection and the LKQ Framework
The design was initially rejected under 35 U.S.C. § 103 over Habeger (U.S. Patent No. 10,271,852), a prior design for a mandrel with curly and winding surface ornamentation, in view of Dormia (U.S. Patent No. 5,176,127), which disclosed a rounded end for endoscopic insertion.
In the initial obviousness analysis, the examiner stated “[f]or the purposes of design patent examination, the cited prior art design is analogous to the claimed design” and “[t]his holding of analogousness is based upon the fact that both the prior art and the claimed design are mandrel articles that form embolic coils.” Unless the examiner was referring only to Haberger as prior art, this statement is incorrect because the Dormia design did not form embolic coils. In any event, the examiner relied on Dormia to supply the rounded top portion missing from Habeger.
Following this rejection, the applicant changed the title from “Mandrel” to “Grooved Mandrel for Producing an Embolic Coil.” The applicant then cited and discussed LKQ Corp. v. GM Global Tech. Ops., 102 F.4th 1280 (Fed. Cir. 2024) (en banc), which emphasizes that a proper obviousness analysis must first establish that both the primary and secondary references are analogous to the claimed article of manufacture.
The applicant persuasively argued that Dormia, which is directed to a medical endoscope, is not from the same field of endeavor as an embolic coil mandrel and thus not an analogous reference. The Examiner agreed and acknowledged Dormia as an improper secondary reference. This alone undermined the original obviousness rationale.
Visual Differences Supporting Non-Obviousness
The applicant further identified three design distinctions over Habeger:
- A closed loop groove at the top spherical end with a transition to a cylindrical body;
- An arcuate overlapping loop groove;
- A nearly closed loop at the bottom end, differing in shape and length from Habeger.
The Examiner accepted the first two distinctions as significant but viewed the third as de minimis, concluding that the bottom grooves of Habeger and the claimed design were visually similar. Nevertheless, the Examiner found the two accepted differences, when considered together and in light of Dormia’s removal, sufficient to warrant withdrawal of the obviousness rejection.
Broken Line and Drawing Objections
Earlier in prosecution, the application faced a § 112(b) indefiniteness rejection due to inconsistently depicted grooves, with some appearing in broken lines and others in solid lines. A corrected broken line statement was submitted, and the figures were amended to improve the scale and clarity of the dashed line pattern. These changes eliminated confusion regarding the claimed and unclaimed portions.
The broken line statement was later objected to for being unnecessary because the drawings no longer showed broken lines. The applicant agreed to remove the statement unless future amendments reintroduced broken elements.
Outcome
Following the applicant’s amendments and arguments, the Examiner:
- Withdrew the § 103 rejection in full,
- Acknowledged that Dormia was not analogous under LKQ,
- Accepted two of the three major distinctions in groove shape and pattern, and
- Determined there was no remaining motivation to modify Habeger alone to reach the claimed design.
Comments
Balance eliminating prior art with preserving broad scope of coverage
The examiner did not object to the title, so the applicant likely amended the title from “Mandrel” to “Grooved Mandrel for Producing an Embolic Coil” to strengthen the argument that the secondary reference Dormia was non-analogous prior art. Although such an amendment may help avoid prior art, it also can potentially narrow the scope of the claim by limiting the range of potentially infringing designs. See Curver Luxembourg SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019) (Title amended to “Pattern for a Chair” did not cover accused baskets with the same pattern). Therefore, caution is advised when amending the title.
Antecedent Basis for Title Amendment
A proposed amendment to the title of the invention requires antecedent basis. If no antecedent basis exists, amendment of the title constitutes new matter and is not permitted. However, antecedent basis for a title amendment does not require textual support in the original specification or application data sheet, so long as it is supported by the visual disclosure. As explained in MPEP § 1503.01(I), the title must designate the particular article of manufacture in a manner that conveys the general nature and use of the design. Where the figures alone clearly depict the subject matter, they may serve as adequate antecedent basis for the amended title. This principle is further confirmed in MPEP § 1504.04, which states that a change in the claim or the title is not considered new matter if the change is supported by the specification and/or drawings as originally filed. In this prosecution, there was no textual antecedent basis for the title amendment, so the examiner must have concluded that the drawings alone were sufficient.
Functional Language
Functional language is not permitted in a title because it improperly carries the function into the claim for the design. See J.D. Diffenderfer, 1872 C.D. 154 (holding that functional language improperly carries utility into a claim that must be limited to ornamental appearance). The language “for Producing an Embolic Coil” added to the claim, at least at first glance, may raise the issue of functionality. Other proposed titles, such as “Lamp for medical purposes,” have been objected to based on functionality concerns. See App. No. 35520531. While the prohibition against functionality is clear in theory, practitioners often face closer calls in application, particularly when phrases like “for producing” or “for medical purposes” are involved.
The examiner likely found the title “Grooved Mandrel for Producing an Embolic Coil” acceptable because it identifies a concrete article (the mandrel), and the phrase “for producing an embolic coil” merely clarifies the context in which the article is used. It helps distinguish this mandrel from others used in unrelated contexts (e.g., textile or plastic manufacturing) without claiming what the mandrel does or how it works. By contrast, the phrase “for medical purposes” in a title like “Lamp for medical purposes” is objectionable because it is vague, purpose-driven, and adds no meaningful limitation to the identity of the lamp. It refers to the intended function or effect of the lamp, not to the article itself, and therefore improperly introduces functional language into what must be a purely ornamental claim.
Disclaimer: This article is for general information purposes only and is not intended to be legal advice.
