In LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024), the Federal Circuit fundamentally reshaped design patent obviousness law. LKQ successfully argued that the long-standing Rosen-Durling test, which required a primary reference to be “basically the same” as the claimed design, was too restrictive and prevented proper application of traditional obviousness principles. The intent behind LKQ’s argument was to make it easier to challenge design patents as obvious by allowing a broader range of prior art to be considered as a primary reference.
However, in replacing Rosen-Durling, the Federal Circuit also emphasized that any obviousness rejection must be supported by a clear and reasoned factual record. Under the LKQ framework, examiners must still identify a primary reference that exists in reality and is sufficiently visually similar to the claimed design to serve as a starting point. Secondary references must come from analogous art, and critically, there must be a record-supported rationale explaining why an ordinary designer would have combined features from those references to arrive at the claimed design.
LKQ did not attempt to fully define the contours of what constitutes analogous art in design patent law. This deliberate non-resolution has led to what is now emerging in prosecution practice. Applicants are challenging examiners’ selection of secondary references as non-analogous, but many examiners continue to assert that the cited art qualifies as analogous. Until more definitive guidance is provided in future cases, clear resolution of this issue during prosecution may remain elusive. As a practical matter, resolution of many obviousness disputes is shifting instead to whether a proper record-supported motivation to combine has been articulated and whether the proposed combination actually results in the claimed design. The following recent prosecution histories illustrate how these debates are unfolding in practice.
Application 29/895,014
In Application 29/895,014,* the applicant sought protection for a wine box design. The examiner initially applied the now-superseded Rosen-Durling framework, combining Agar, Reynolds, and Wong as prior art references. Agar served as the primary reference for its basic box structure with partitioned cells. Reynolds was cited for the configuration of internal dividers, and Wong for its closure flaps.
*Links to selected prosecution documents as obtained from ProSearch by Design Patent Pro. Complete prosecution histories can be obtained from the USPTO Patent Center.
The applicant invoked the LKQ decision to challenge the inclusion of Reynolds, arguing that it was not analogous art because it described a container used in manufacturing processes for blister packs, not for shipping bottles. The applicant emphasized that superficial visual similarity was insufficient to justify combination absent a record-supported rationale. The examiner did not agree that Reynolds was non-analogous prior art, but the examiner ultimately withdrew the rejection after acknowledging that under LKQ, it would not have been obvious to combine the references to arrive at the claimed design.
Application 29/838,217
Application 29/838,217 involved a wine bottle design and presented another application of LKQ principles. The examiner rejected the claim under 35 U.S.C. §103 by combining a non-patent Waterloo reference with the Lauret design patent. The examiner asserted that substituting Lauret’s tapered base into the Waterloo design would have been an obvious modification.
The applicant amended the claimed design and argued that LKQ requires an initial showing of visual similarity for a valid primary reference, which was lacking here.
The applicant also argued that the examiner failed to provide any reasoned basis for combining Lauret’s features with Waterloo’s design, emphasizing that simple substitution requires more than superficial similarity. The examiner withdrew the rejection and allowed the claim, illustrating the increasing need for clear factual analysis and motivation-to-combine reasoning under LKQ.
Application 29/770,373
In Application 29/770,373, the applicant sought protection for a horizontal display board with six evenly spaced rectangular recesses. The examiner applied Morin as the primary reference, which disclosed a similar board but with deep recesses, and cited Krawitz and Cobb to address differences in corner shapes.
The applicant pointed out that the recess depth was a significant visual difference not addressed by any of the cited references. The applicant also argued that Cobb was not analogous art because it disclosed full cut-outs rather than recesses, and its figure cited by the examiner depicted the rear of the display board. The examiner withdrew the rejection after acknowledging that the recess depth difference was substantial, again underscoring the importance of factual distinctions that materially affect visual appearance.
Application 29/748,412
Application 29/748,412 involved a graphical user interface design with a radial menu. The examiner initially rejected the claim by combining two online non-patent references, citing Tynan as the primary reference and incorporating additional features from Viper.
In a second obviousness rejection, the claimed design was considered obvious in light of King, Viper, and OnAir.
A key distinction in this case was a phone icon element, originally presented in broken lines. During an interview, the examiner indicated that converting the phone icon from broken lines to solid lines would overcome the rejection, as neither reference disclosed that feature. The applicant amended the drawings accordingly, and the examiner withdrew the rejection.
This prosecution demonstrates how focused amendments that introduce new claimed features can effectively resolve obviousness rejections without requiring extensive legal argument.
Application 29/813,174
Finally, Application 29/813,174 involved a graphical user interface with multiple concentric rings and small circular elements. The examiner applied Bauer as the primary reference, supplemented by Wang and Li.
The applicant argued that Bauer was not visually similar because the placement of the circles relative to the concentric rings was materially different. The applicant also emphasized that combining Bauer with Wang and Li would require modifying every individual feature of the primary reference, contrary to the LKQ guidance. Wang’s rings were partially segmented and asymmetrical, while Li’s rings were not concentric at all. The examiner allowed the claim after accepting that the combination failed to teach the claimed design.
Conclusion
These five prosecutions illustrate how design patent obviousness is being applied in practice following LKQ v. GM. In each case, the examiner identified one or more prior art references and asserted that they qualified as analogous art. The applicant responded by challenging either the selection of the primary reference, the rationale for combining features, or the specific factual differences between the cited designs and the claimed design. While applicants often argued that one or more secondary references were not analogous, the examiners generally maintained that the references were analogous but withdrew the rejections for other reasons. In some cases, the examiner concluded that the combination of references did not result in the claimed design. In others, amendments introduced additional features that distinguished the design from the cited art. Throughout these prosecutions, the key issues focused on whether there was a sufficient record-supported basis to combine references and whether the combination as proposed actually produced the overall appearance of the claimed design. These examples demonstrate how, even with the broader scope of prior art permitted by LKQ, obviousness determinations continue to turn on careful comparisons of visual appearance and on the examiner’s ability to articulate a clear, record-supported supported rationale for combining references.
