Analogous and Non-Analogous Art in Design Patent Law
The analogous art requirement determines the scope of prior art that can be considered when assessing whether a claimed design is obvious or anticipated. It exists because a person of ordinary skill “could not possibly be aware of every teaching in every art.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The analogous art requirement is “meant to defend against hindsight” by limiting the amount of prior art that can be considered. See LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1296 (Fed. Cir. 2024) (quoting In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
The analogous art requirement applies to both obviousness and anticipation. In an obviousness analysis, a reference qualifies as prior art when it is analogous to the claimed invention. See Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019) (citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)). This requirement is tied to the statutory language of the Patent Act, 35 U.S.C. § 103, which “provides the perspective of a person of ordinary skill in the art by defining that person’s scope of knowledge.” LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1296 (Fed. Cir. 2024).
A prior art reference also must be analogous when determining whether a claimed design is anticipated. Although originally the rule was to the contrary, see In re Glavas, 230 F.2d 447, 450 (CCPA 1956), the Federal Circuit in In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021) effectively limited prior art to analogous prior art in an anticipation analysis by holding “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” Id. at 1382. This rule applies equally to configuration and surface ornamentation claims. See Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 1342-1343 (Fed. Cir. 2019).
In SurgiSil, the application claimed a design for a lip implant, as follows:
The Examiner rejected the claim as anticipated by a design for an art tool called a stump, shown as follows:
The Board affirmed, explaining that “whether a reference is analogous art is irrelevant to whether that reference anticipates.” Id. at 1381 (quoting In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). The Federal Circuit reversed, reasoning that the claim was limited to lip implants and did not cover other articles of manufacture. The Court concluded that since the prior art reference was for an art tool and not a lip implant, the “Board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope.” Id. at 1382. This decision appears to effectively align the scope of prior art considered in an anticipation analysis with the prior art considered when determining obviousness.
Two-Part Test for Determining whether Prior Art is Analogous
For utility patents, the courts use a two-part test to determine whether art is analogous: “(1) whether the art is from the same field of endeavor as the claimed invention, and (2) if not, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1297 (Fed. Cir. 2024). The first part of the test (same field of endeavor) applies to design patents in a straightforward manner. Id. It is “less apparent” how the second part of the test (reasonably pertinent to the particular problem) applies to design patent claims because typically it is less clear how an ornamental design for an article could be viewed as solving a problem. Id.
In LKQ, the Court did not “delineate the full and precise contours of the analogous art test for design patents,” but stated “[p]rior art designs for the same field of endeavor as the article of manufacture will be analogous, and we do not foreclose that other art could also be analogous. The Court concluded “[w]hether a prior art design is analogous to the claimed design for an article of manufacture is a fact question to be addressed on a case-by-case basis and we ‘leave it to future cases to further develop the application of this standard.’ Cf. Egyptian Goddess, 543 F.3d at 679 (quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc)).” Id. at 1297, 1298.
In Hupp v. Siroflex of America, Inc., 122 F.3d 1456 (Fed. Cir. 1997), the Federal Circuit expressed the analogous art standard as “designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Id. at 1462. When referring to an apparent analogous prior art reference, the Court stated it “is the same kind of article of manufacture, and has the same use as that of [the claimed design].” Id.
Same Field of Endeavor
In the utility patent context, the appropriate field of endeavor is determined “by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (prior art toothbrush design found analogous to claimed hairbrush design). The fact finder “must consider the ‘circumstances’ of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.” Id. at 1326.
When supported by the title and disclosure, the relevant field of endeavor is defined specifically rather than generally. For example, in Circuit Check, Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015), the field of the invention was defined as “circuit board testers and test fixtures,” and not engraving technology in general, where the claimed subject matter covered methods for marking holes on circuit board testers and the putative prior art involved “rock carvings, engraved signage, and Prussian blue.” Id.
Although Bigio, supra, is a utility patent case, it is cited by applicants in obviousness arguments and determinations in design patent prosecutions. See, e.g., App. No. 29/819,179, p.17/36 (DPP March 19, 2024) (argued wine chiller bucket prior art reference not analogous to claimed package design under Bigio); App. No. 29/750,948, p. 17/45 (DPP April 30, 2024) (argued graphic designs for smart phones non analogous to claimed design for Near-Field Communication Enabled Smart Device under Bigio); App. No. 29/669,331, p. 94/119 (DPP April 18, 2023) (argued prior art reference from online question-and-answer forum for programmers using CSS non analogous to claimed ceiling fan remote control icon under Bigio); App. No. 29/696,700, p. 29/43 (DPP Oct. 18, 2022) (argued design for a display screen of a device with graphical user interface for a welding system non analogous to a design for a lock/unlock indicator under Bigio); App. No. 29/684,536, p. 13/32 (DPP Aug. 30, 2022 (argued butted metal tubes and plastic sleeves for ratchets non analogous to Nozzle Guard under Bigio); App. No. 29/681,103, p. 12/40 (DPP June 8, 2021) (argued Mirrored Vanity Dressing/Make-Up Table non analogous to Electronic Display Screens for Gaming Machines under Bigio)
Particular Problem to be Solved
Prior art is analogous if it is reasonably pertinent to the particular problem the inventor is trying to solve. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). Although “familiar items may have obvious uses beyond their primary purposes,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007), a reference is only reasonably pertinent when it “logically would have commended itself to an inventor’s attention in considering his problem,” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992); See also Circuit Check, supra, at 1335 (Fed. Cir. 2015) (“The question is not whether simple concepts … are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.”).
In the pre-LKQ case of Samiam Group LLC v. Coopersburg Associates, 650 F. Supp 3d 295 (E.D. Pa. 2023), the Court included analysis of a particular problem to be solved in its discussion of analogous prior art for a design patent. The claimed design was for a drinking vessel that looked like an upright baseball bat. The “particular problem” discussion centered around the different goals and purposes of cups and baseball bats. Some of the putative prior art consisted of baseball bats. The Court stated “baseball bats do not qualify as prior art … because they do not come from the same field of endeavor.” Id. at 308. The Court explained further that “[a] baseball bat belongs to the field of sporting and recreational play of hitting a ball,” whereas the patent at issue “belongs to the field of consuming beverages.” Id. “Nor are baseball bats and the [drinking vessel patent] pertinent with a particular problem; the goal of a baseball bat is to hit a ball” and “[t]hough the [drinking vessel] could be used to hit a ball, its true purpose is to hold liquid for drinking; to put it plainly, the subject patent is a design for a cup” and “a baseball bat cannot be prior art for a cup.” Id.
Design patent applications that mention a “particular problem to be solved” in an analogous prior art analysis tend to group it with “same field of endeavor” without separate analysis. The “problem to be solved” is described merely as the problem of designing the particular article. For example, in App. No. 29/708,206, p. 11-12 (DPP Jan 2, 2024), the claimed design was for a Connector Hub for a Surgical Instrument. The prior art was (1) a cutting device for cutting a rotating workspace, and (2) fuel dispensing breakaway. After describing the different purposes of the connector hub and the prior art references, the applicant simply asserted that the rotating cutting device and fuel dispensing device were not “from the same field of endeavor or reasonably pertinent to the problem of designing a connector hub for a surgical connector.” Id. See also App. No. 29/790,623, p. 26/50 (DPP July 23, 2024) (“The grooming tool of Doan is not from the same field of endeavor or reasonably pertinent to the problem of designing a surgical cement removal tool.”).
Simulation of a Well-Known or Naturally Occurring Object or Person
The MPEP states “[a]nalogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well known or naturally occurring object or person” and “[t]he simulative nature of that portion of the design is prima facie evidence that art which simulates that portion would be within the level of ordinary skill under 35 U.S.C. 103.” MPEP 1504.03 II.A.1. This means that the scope of analogous art can be expanded to include references that simulate the same portion of the design, even if they are not from the same field of endeavor.
For example, in App. No. 29/734,007, the claimed design was for a unit dose detergent (below left) and the prior art consisted of tiles (below center and right).
The applicant argued that tiles were non analogous to a unit dose detergent and did not qualify as analogous prior art. The Examiner disagreed and stated “[while the title of the design is directed to unit dose detergent, the actual form of the design is in the known shape of a tile,” and “[t]herefore, analogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well-known or naturally occurring object or person.”
Portion Claiming Treated Differently?
In In re SurgiSil, the claim identified a lip implant and the claim language recited “a lip implant.” The title was “Lip Implant.” The Court held that “the claim is limited to lip implants and does not cover other articles of manufacture. Id. at 1382.
In App. No. 29/734,814, p. 6-7/30 (DPP Nov. 22, 2022), the claimed design was titled “Printer,” and the asserted prior art was a Computing Device. The applicant argued that under SurgiSil, the claimed design was limited by the title to a “printer,” and the prior art computing device was non analogous to a printer because a computing device had no printing capabilities. The Examiner rejected the argument and stated that the title limitations in SurgiSil were not applicable because both the claimed design and the asserted prior art were embodied in less than the entire article. The Examiner reasoned that both the claimed design and the prior art were portions of an electronic device housing, which made them closely related analogous arts. The Examiner concluded that “[a] person having ordinary skill in the art of making electronic housings could easily be expected to know methods and appearances of other housings that are endemic across the predominance of electronic device housings.” Id. at 7. The claim was allowed based on differences between the claimed design and the prior art and not because the prior art was non analogous. Id.
Conflict between Title and Drawing Figures
When there is a potential conflict between the title and the shape of the design in terms of scope, which controls? In App. No. 29/734,007, mentioned above, the Examiner appears to conclude that the shape of the design governs the scope by stating “[while the title of the design is directed to unit dose detergent, the actual form of the design is in the known shape of a tile.” This issue is important for applicants who are trying to influence the scope of analogous prior art by amending the title.
Influencing the Scope of Analogous Prior Art
Applicants interested in narrowing the field of analogous prior art have amended the title to narrow the potential scope. For example, in App. No. 29/750,948, the applicant originally titled the claimed design “Smart Device.” The Examiner cited two icons for mobile device applications, i.e., software, as analogous prior art. The applicant argued that the claimed design is “directed towards a physical smart device, such as a near-field communication enabled smart device for users of a virtual environment” (emphasis in original), and therefore the two icons did not qualify as analogous prior art. The Examiner disagreed and explained “[a]lthough the references relied upon are graphical user interfaces or icons, the claim is referenced in the preamble as being similar to a ‘near-field communication enabled smart device for users of a virtual environment.’” The Examiner stated “[t]he references cited are understood to exist as virtual environment shown on a smart device” and therefore were considered as analogous. In response, the applicant amended the title of the claimed design to “Near-Field Communication Enabled Smart Device”. The Examiner then considered the cited prior art to be non-analogous and withdrew the obviousness rejection.
