The Federal Circuit’s recent decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) has significantly altered the framework for assessing obviousness under 35 U.S.C. § 103 in design patent law. While the case specifically addressed § 103, its reasoning has broader implications, particularly for obviousness-type double patenting (ODP) rejections. This article examines how LKQ v. GM can be effectively used to rebut ODP rejections, with a specific focus on the prosecution history of Application No. 29/866,646, a design patent for a golf club head.
Prior to LKQ v. GM, the Federal Circuit applied the Rosen-Durling test to assess design patent obviousness. This rigid framework required a primary reference that was “basically the same” as the claimed design before considering secondary references. However, in LKQ, the court overruled In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and In re Durling, 101 F.3d 105 (Fed. Cir. 1996), bringing design patent obviousness in line with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the standard for utility patents. The new approach mandates that the USPTO provide a clear rationale for why an ordinary designer would modify an existing design, establish that the overall visual impression remains unchanged post-modification, and clearly articulate why a given modification would be obvious. This decision imposes a higher burden of justification on the USPTO, making it more challenging to sustain obviousness rejections.
Obviousness-type double patenting (ODP) aims to prevent applicants from obtaining multiple patents on obvious variations of their own prior designs. Unlike § 103 obviousness, which considers the entire body of prior art, ODP is limited to the applicant’s own prior patents. However, both analyses hinge on the same fundamental question: Would an ordinary designer consider the later-filed design to be an obvious modification of the earlier patented design? Under LKQ v. GM, the USPTO must now provide a clear, reasoned justification for why a designer of ordinary skill would make the proposed modification. This standard applies equally in the context of ODP rejections, where vague assertions of “minute differences” are insufficient.
In Application No. 29/866,646, the Examiner issued an ODP rejection, citing prior design patents D973,801 (Ref. 1) and D974,510 (Ref. 2). The Examiner argued that the only differences between the claimed design and the prior patents were a different shaped striking face, a different pattern detail on the bottom surface, and a different shaped hosel (relative to D974,510). The Examiner contended that these were insubstantial variations and did not render the design patentably distinct.
In response, the applicant relied on LKQ v. GM to argue that the rejection failed to meet the required standard of justification. The applicant contended that the Examiner failed to provide a rationale for the proposed modification, as required under LKQ, which mandates that an obviousness determination must be supported by a clear rationale. The rejection lacked any explanation as to why an ordinary designer would modify the cited prior patents to arrive at the claimed design. Furthermore, the applicant emphasized that the differences were aesthetically and commercially significant. The strike face insert shape in the claimed design was rectangular, whereas the prior patents disclosed hexagonal inserts. The sole pattern in the claimed design was asymmetrical, contrasting with the symmetrical soles in the cited references. In the highly competitive golf equipment industry, these distinctions contribute to consumer perception, brand differentiation, and commercial success.
The applicant also argued that the Examiner’s reliance on “minute differences” was inconsistent with LKQ v. GM. The Federal Circuit clarified in LKQ that overall visual impression is the governing standard. Even small ornamental modifications can have substantial design significance in a crowded field such as golf club head designs. Ultimately, the USPTO found the applicant’s arguments persuasive and withdrew the ODP rejection, allowing the design to proceed to grant as D1060564.
This case study demonstrates several key takeaways for design patent practitioners. First, demand a clear justification for modifications. Examiners must do more than state that the differences are “minor”—they must provide a specific rationale for why an ordinary designer would make the proposed changes. If such reasoning is absent, challenge the rejection based on LKQ’s heightened standard. Second, emphasize overall visual impression. Even small ornamental differences can substantially alter the overall design perception. Highlight industry norms, as subtle aesthetic distinctions may be highly relevant to consumer appeal. Finally, ODP rejections are now more susceptible to challenge. The higher threshold for § 103 obviousness post-LKQ also applies to ODP. Examiners can no longer rely on pre-LKQ reasoning to justify ODP rejections, and applicants should demand a fully articulated rationale for any claim of obviousness.
The LKQ v. GM decision has fundamentally changed the design patent obviousness framework, and its implications extend beyond § 103 rejections to include obviousness-type double patenting. The case study of Application No. 29/866,646 demonstrates how practitioners can use LKQ to successfully challenge weak ODP rejections and force Examiners to meet a higher standard of justification. Moving forward, design patent applicants should be prepared to leverage LKQ in both § 103 and ODP contexts to ensure that their applications receive fair and rigorous examination. If you have encountered an ODP rejection that appears unjustified, consider whether LKQ v. GM provides a basis for rebuttal. The evolving jurisprudence surrounding design patents presents new opportunities to push back against improper rejections and secure stronger patent protection.
Disclaimer: This article is for general information purposes only and is not intended to be legal advice. It was researched and written with the assistance of Lexis, ProSearch, and AI tools.
