A total of 926 Design Patents issued on June 24, 2025.
Unpublished PTAB Decisions
One application (29798750) has an unpublished PTAB decision (Ex Parte Chen, 2024-000640) reversing the Examiner on an issue of obviousness with an LKQ analysis.
Ex Parte Chen is another good example of an applicant overcoming an obviousness rejection by arguing that the Examiner failed to provide a record supported reason to combine prior art references. Gone are the days when an Examiner could simply recite the boilerplate reasoning that the references “are so related that the appearance of features shown in one would suggest the application of those features to the other.”
In Chen, the PTAB reversed the Examiner’s rejection of the design patent application directed to a “Display Screen or Portion Thereof with Graphical User Interface.” The Examiner originally had rejected the claim under 35 U.S.C. § 103 based on combinations of three references: Cadillac, Mazda, and Black Arrows.
The Examiner asserted that the design features of the claimed shoe, rectangular pedal, and upward curving arrow could be derived by modifying Cadillac with features from Mazda and Black Arrows, or vice versa. However, the PTAB found the Examiner’s reasoning insufficient under the newly adopted LKQ Corp. v. GM Global Tech. standard, which replaced the rigid Rosen-Durling test with a more flexible Graham analysis requiring a record-supported motivation to modify prior art designs to arrive at the claimed overall visual appearance.
Specifically, the Board found that neither Cadillac nor Mazda provided a sufficient basis to motivate a designer of ordinary skill to make the proposed modifications, particularly given the differences in arrow orientation and placement relative to the shoe. Cadillac’s horizontal arrows and Mazda’s downward pointing arrow both differed significantly from the claimed design’s upward diagonal curved arrow. The Board also found that reliance on Black Arrows, which merely showed a variety of curved arrows, did not adequately explain why a designer would modify the prior art in the manner suggested. In the absence of a record-supported motivation to combine prior art references, the Board reversed the obviousness rejection.
Notable Issues
Two applications have a Section 103 Obviousness analysis with an LKQ discussion. These are:
29798750 (Display Screen or Portion Thereof with Graphical User Interface – D1080640) (discussed above)
29822973 (Bottle – D1080391)
Two applications involve indefiniteness rejections with discussions of In re Maatita. These are:
29825880 (Reusable Shell For Absorbent Article – D1080865)
29867397 (Creative Tool – D1080693)
In 29825880, the applicant originally filed four drawing figures that disclosed the claimed design in three dimensions, but following an indefiniteness rejection, cancelled all drawings but one (Fig. 2), and successfully argued that In re Maatita applied.
In 29867397, the applicant filed multiple drawing figures disclosing the claimed design in three dimensions. The Examiner issued an indefiniteness rejection alleging that the depth (or height) of certain features could not be determined. The applicant responded that In re Maatita should apply and analogized the rejection to a famous movie line in A Christmas Story: “The concern that some area in a figure might protrude, perhaps arbitrarily far, reminds the undersigned of the famous line in the movie A Christmas Story in which Ralphie is warned ‘you could shoot your eye out with that’.”
The Examiner stuck to his guns and issued a final rejection on indefiniteness. Responding to the movie analogy, the Examiner stated:
“Conjecture is understood to be a conclusion based on incomplete evidence. So, the movie quote cited by Applicant is agreeable as conjecture since there is no way to know that Ralphie would indeed shoot his eye out once he secured a Red Ryder BB-gun. As applied to the claimed design, there is no way to be sure the lines of the claimed design in the pertinent views convey one and only one interpretation. Not everyone with a Red Ryder BB-gun will shoot their eye out, and not every designer with the current views will replicate the claimed design similarly. Accordingly, much like Applicant’s appreciated analogy, we cannot conclude the end result based on many possibilities.”
Responding to the applicant’s In re Maatita argument, the Examiner stated:
“[I]n contrast to the presently claimed design, the shoe bottom in Maatita was exemplified in a two-dimensional, plan-view. The Federal Circuit equated a shoe bottom to a rug and “is capable of being viewed and understood in two-dimensions through a plan- or planer-view illustration.” Also, the Federal Circuit contrasted the shoe bottom to an entire shoe or teapot, which as a three-dimensional article could not be adequately disclosed with a single, plan- or planer-view drawing.
Accordingly, because the instantly claimed design is not constrained to the bottom of the article, but encompasses other views which collectively set forth the metes and bounds of the article’s claimed design, the lines only seen in the bottom view(s) cannot be resolved as to their intents, and so the scope remains unclear, and the ordinary skilled designer is incapable of making the design.”
Out of bullets, the applicant agreed to convert portions of the claimed design to broken lines and insert a broken line statement as suggested by the Examiner.
(Links to selected prosecution documents as obtained from ProSearch by Design Patent Pro. Complete prosecution histories can be obtained from the USPTO Patent Center)
Type of Rejections/Objections (Numbers approximate)
The two most frequent rejections and objections are for improper or missing broken line statements (120) and indefinite depth (91).
For information and tips on how to avoid and respond to these types of rejections, see broken line statements and indefinite depth.
Number of Rejections, Objections, and Restrictions
Non-Final Rejections (328) (35.4%)
Final Rejections (80) (8.6%)
Ex Parte Quayle Actions (202) (21.8%)
Restriction Requirements (63) (6.8%)
Pendency
The average time filing to issue is 663 days (21.79 months), which is higher than last month’s 619 days.
A total of 199 (21.5%) were expedited, with an average filing to issue time of 210 days (6.9 months). A total of 727 (78.5%) were non-expedited, with an average filing to issue time of 787 days (25.9 months).
