The prosecution history of Design Patent Application No. 29/860,441 (US D1,057,742) provides an insightful case study on the evolving obviousness standard in design patents post-LKQ Corp. v. GM Global Tech. Operations LLC., 102 F.4th 1280 (Fed. Cir. 2024). This application faced an initial rejection under 35 U.S.C. §103 based on a combination of prior art references. However, through strategic arguments challenging the examiner’s reliance on primary and secondary references, the applicant successfully overcame the rejection. This post explores the key arguments, examiner’s reasoning, and critical takeaways for navigating design patent prosecution under the new LKQ framework.
Title: Display Screen or Portion Thereof with Graphical User Interface
Initial Rejection for Obviousness:
The design patent application for a “Display Screen or Portion Thereof with Graphical User Interface” was initially rejected under 35 U.S.C. §103 on the grounds of obviousness. The rejection was based on a combination of prior art references, primarily Stark in view of Syncfusion, Cvetinovic, and Lokhorst.
The examiner asserted that Stark’s design characteristics were basically the same as the claimed design in that “both designs show a graphical user interface feature comprising a large circular outline with radial diagonal tick marks and a humanoid cycling icon with circle outline.” The asserted differences were that the claimed design showed longer diagonal and horizontal tick marks, a triangle at the top, and a cycling icon with a horizontal humanoid figure. The examiner claimed that Syncfusion taught the tick marks, Cvetinovic taught the triangle, Lokhorst taught the icon, and that the combination had the same overall appearance as the claimed design.
The examiner argued that these references properly could be combined because they were “so related that the appearance of features shown in one would suggest the application of those features to the other.”
Applicant's Response:
In response to the rejection, the applicant challenged the examiner’s position by citing the recent Federal Circuit decision in LKQ Corp. v. GM Global Tech. Operations LLC, which overruled the Rosen-Durling test. The applicant argued that under the new legal framework, Stark was insufficient as a primary reference due to key visual distinctions, such as the absence of a marker at 6 o’clock, the presence of a prominent triangle pointer at 12 o’clock, and the use of radial pill-shaped tick marks.
Applicant further argued that even if Stark were a proper primary reference, the examiner failed to provide a record-supported reason for combining elements from Syncfusion, Cvetinovic, and Lokhorst. The applicant emphasized that the proposed combination required impermissible hindsight due to the dissimilar overall appearances of the references and their different functional purposes (e.g., smartwatch face vs. speed gauge vs. compass).
Examiner's Statement of Reasons for Allowance:
Following the applicant’s response, the examiner withdrew the rejection and issued a statement of reasons for allowance. The examiner acknowledged that the applicant’s amendments and arguments overcame the rejection under 35 U.S.C. §103.
The examiner found the design to be non-obvious and patentable due to its specific combination and arrangement of graphical elements, including:
- A triangle pointer at the 12 o’clock position.
- The absence of a tick mark at the 6 o’clock position.
- Radial pill-shaped tick marks at all other hours.
- A circular icon at the bottom center featuring a bent-over cyclist.
Comments:
This application is among the first to substantively apply the new LKQ obviousness analysis, and it raises several noteworthy issues that warrant discussion.
Primary Reference
The applicant contended that Stark should not be considered a primary reference. Under the new LKQ analysis, selecting a primary reference remains a requirement, but the criteria have been significantly relaxed. The primary reference no longer needs to be “basically the same” as the claimed design; instead, it must simply be “something in existence” that usually is “most visually similar to the claimed design.” Id. at 1298. Additionally, while the primary reference is typically from the same field of endeavor as the claimed ornamental design’s article of manufacture, it is not mandatory, provided it qualifies as analogous art. Id. In this application, the examiner identified an analog-style smartwatch face as the primary reference, which would reasonably be considered to qualify as analogous art to the claimed design.
Due to the relaxed requirements for a primary reference, challenging an asserted primary reference will be difficult unless it lacks visual similarity to the claimed design or falls outside analogous art. Another strategy to consider is emphasizing the differences between the asserted primary reference and the claimed design. After doing so, an argument can be made that these differences impose a greater burden on the examiner (or patent challenger) to establish obviousness. This argument, by contrapositive reasoning, aligns with LKQ’s observation that “[t]he more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.” Id.
Note that LKQ emphasizes the same reasoning when considering combinations between primary and secondary references: “[t]he more different the overall appearance 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.” Id. at 1300. This point was emphasized by the applicant during prosecution.
Secondary References and Analogous Art
The secondary references cited were a speed gauge (Syncfusion), a compass (Cvetinovic), and a digital-style smartwatch face with a cycle mode function (Lokhorst). The applicant did not argue that any of these references were from non-analogous art. In LKQ v. GM, the court did not establish a comprehensive or precise definition of the analogous art test for design patents. It clarified that prior art designs within the same field of endeavor as the article of manufacture are considered analogous but did not exclude the possibility that other art could also qualify. Determining whether a prior art design is analogous to a claimed design is a factual inquiry that must be evaluated on a case-by-case basis. The court stated that future cases would further develop the application of this standard.
Note that an applicant can potentially influence the scope of analogous art by the careful selection of the design title that clarifies the article of manufacture. See In re SurgiSil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. 2021) (rejecting the use of an art tool design as the basis of an anticipation rejection of a claimed lip implant design). In this case, the design was titled “Display Screen or Portion Thereof with Graphical User Interface,” which is broad in scope. Had the title included a more specific qualifier, such as “for a watch” or another timekeeping device, it may have strengthened an argument that references like the compass and speed gauge were non-analogous art. However, note that the substance of the design also factors into the analogous art analysis. Id. (“Board found that the application’s figure depicts a lip implant”).
When amending the title, caution is advised because narrowing the title also can limit the scope of the patent, potentially leading to unfavorable outcomes in litigation. For example, in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), the court found that narrowing the title of a design from “Furniture (part of-)” to “Pattern for a Chair” during prosecution contributed to a finding of non-infringement regarding the pattern for a basket.
Record Supported Reason to Combine References
In the non-final rejection, the Examiner asserted that the modification of the primary reference in light of the secondary references is proper because the secondary references “are so related that the appearance of features shown in one would suggest the application of those features to the other.” (citing In re Rosen, 673 F.2d 388 (CCPA 1982)). Under this principle, secondary references can be used to modify the primary reference only if they are sufficiently related in terms of overall design. A good example of this is In re Borden, 90 F.3d 1570 (Fed. Cir. 1996), where the design for a Twin Neck Dispensing Container was considered obvious in light of three references. The secondary references were appropriately combined with the primary reference because they all shared a similar overall appearance featuring dual chambers, each with a small chamber located in the upper corner of the container.
As a preliminary matter, the applicant argued that LKQ overruled the Rosen-Durling requirement that the secondary references be “so related” to the primary reference and added a requirement that modification to the primary reference must be supported with a “record supported reason (without hindsight).” To the extent applicant’s argument is interpreted to mean that the “so related” test can no longer provide a record supported reason, that interpretation may be questioned. LKQ only stated that the “so related” requirement was improperly rigid, that primary and secondary references “need not be ‘so related,’” and “the motivation to combine these references need not come from the references themselves.” Id. at 1299. LKQ did not state that the “so related” principle, when properly expressed and explained, could not provide the record supported reason to modify. This point is important because examiners typically do not have the resources to develop obviousness arguments based on other record supported reasons mentioned in LKQ, such as an ordinary designer’s experience and creativity, market demands, and industry customs. This leaves prior art references as the primary source for obviousness rejections. Future case law will need to address the issue of whether the “so related” test is still viable, and if so, how it is now applied.
As to the applicant’s argument against the combination, applicant asserted that the examiner failed to provide a record-supported reason for combining elements from Syncfusion, Cvetinovic, and Lokhorst. The applicant emphasized that the proposed combination required impermissible hindsight due to the dissimilar overall appearances of the references and their different functional purposes (e.g., smartwatch face vs. speed gauge vs. compass).
Dissimilar Overall Appearances
Applicant’s “dissimilar overall appearances” argument was persuasive, and it typically is persuasive when properly supported. Under the “so related” test, a secondary reference cannot be combined with a primary reference solely because the secondary reference is analogous prior art and includes a design element found in the claimed design but absent from the primary reference. The entire appearance of the secondary reference must be evaluated—not just isolated elements—to determine whether incorporating the design element is naturally suggested. The secondary reference must convey an overall visual impression that aligns with the primary reference. If the general aesthetic style, proportions, or ornamentation of the secondary reference differ significantly, combining the references likely will not be appropriate. Any combination must not require substantial modifications that alter the overall character of the primary design. Instead, it should represent an obvious substitution or addition that a designer of ordinary skill would reasonably consider.
Selecting a secondary reference solely because it contains an isolated feature from the claimed design—without considering its overall visual impression—suggests an impermissible hindsight-driven approach rather than an obvious improvement based on sound design principles. In short, the entire appearance of the secondary reference must be considered when assessing its compatibility with the primary reference. If the secondary reference introduces a substantially different visual impression or aesthetic style, it may not serve as a suitable reference, even if it includes a relevant element.
Functional Considerations
The applicant argued that the combination of references was hindsight driven “particularly where the designs have totally different functions” (smartwatch face vs. speed gauge vs. compass). This argument, although not further developed in the prosecution history, was proper and effective because reasons to combine or not combine references can arise due to functional considerations.
Although a design is not patentable if its overall design is primarily functional, or dictated by function, see Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329 (Fed. Cir. 2015), articles and portions of articles to which designs are applied typically have functions. See Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1563 (Fed. Cir. 1988). When considering modification of a design, functional concerns may come into play. For example, MPEP § 1504.03 II states “[i]f the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art.”
Two case examples to consider when dealing with functional considerations in an obviousness analysis are In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001) (prior art compact disc reference did not render obvious claimed design due to functional considerations); In re Garbo, 287 F.2d 192 (C.C.P.A. 1961) (design for a cinematic multiple-place trainer for automobile drivers rendered obvious in light of a prior art reference with court stating “if the objective of the designer, as here, motivates him to take old seating arrangements and adapt them to a specified area thereby bringing about an expected appearance, patentability is not present.” Id. at 193.
Other Factors Relevant to a Motivation to Combine References
Other factors may be considered regarding whether references may be combined based just on the references themselves. For example, if the overall appearance of the secondary reference teaches away from the proposed combination, then the combination lacks motivation. A reference may be said to teach away when a person of ordinary skill, upon viewing the reference would be led in a direction divergent from the path that was taken by the applicant.
A case example of teaching away due to aesthetic considerations is Ex Parte Troutman, No. 2009-005005 (BPAI September 23, 2009). In Troutman, the claimed design was exposed legs for a play yard, shown in solid lines below:
The examiner rejected the claimed design as obvious over one design patent (Celetina-Krevh USD448,218) and two utility patents (Tigrett US3,162,865 and Gottlieb US3,187,352). The Board reversed.
The Board found that in the Celetina-Krevh patented design, “the curved legs of the play yard have what appear to be lengths of fabric wrapped around the legs to cover the legs, the fabric being attached to the walls (also apparently fabric) of the enclosure of the play yard.”
The examiner argued the leg shape was disclosed by Celetina-Krevh and that Tigrett and Gottlieb taught full exposure of the legs. The Board was not persuaded, holding that that since the legs were covered by fabric in Celetina-Krevh, this patent taught away from exposed legs and could not be used as a prior art reference to render the claimed design obvious.
A case example where the prior art did not teach away from a combination and instead supported a finding of obviousness is In re Borden, 90 F.3d 1570 (Fed. Cir. 1996), discussed briefly above.
A second example is if the proposed combination of the references destroys the fundamental characteristics of the primary reference, the combination of the prior art likely is improper. For more about other relevant factors, see Understanding Design Patent Obviousness Principles Following LKQ v. GM
Final Note:
The examiner argued that the test for invalidity due to obviousness should be based on the perspective of the ordinary observer, citing International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 93 USPQ2d 1001 (Fed. Cir. 2009). That case stated “obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.” Id. at 1240.
This statement of law is incorrect and was later acknowledged to be incorrect in High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013). In High Point, the court clarified that the International Seaway decision may have mistakenly used the term “ordinary observer” instead of “designer of ordinary skill.” The court further emphasized that the standard for obviousness in design patents is based on the perspective of a designer of ordinary skill, as established by precedent, and reaffirmed by cases such as Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) and Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1998).
Unfortunately, this incorrect statement of law has persisted in many design patent prosecutions and has been cited over the past four years in over 440 applications with at least one non-final rejection. Source: Design Patent Pro (ProSearch).
