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Each week we pull the file histories of newly issued design patents that drew at least one rejection. This week’s batch held 285 of them. Read together, they highlight the importance of the applicant’s own product listing on Amazon, its launch video on YouTube, its brand’s Instagram post, and whether the applicant can prove, with documents, that the disclosure came from the inventor.
Seventy-two of the 285 histories had a 102 rejection. Nearly all of them were built on web sources, and Amazon listings alone appear in 44 histories. Applicants filed declarations under 37 CFR 1.130 in 68 histories. By comparison, there were 19 obviousness rejections in the entire batch.
1. The Week in Numbers
- 285 histories reviewed. Every one had at least one Office action before allowance, so the first-action allowance rate for this set is zero by definition of how the batch is collected.
- 102 rejections: 72. 103 rejections: 19.
- Section 112 drawing-disclosure rejections: 191. This category covers written description, enablement and indefiniteness rejections aimed at the drawings or the scope of the claim, most often made under 112(a) and (b) together. It does not include ordinary drawing objections, counted separately below. New matter rejections: 13.
- Section 171 rejections: none for lack of ornamentality, functionality, or an article of manufacture.
- Obviousness-type double patenting: 30. Terminal disclaimers: 33.
- Broken line statement objections: 70. Other drawing objections: 103.
- Restriction requirements: 31. Examiner interviews: 44. Petitions: 8. Appeals or pre-appeal briefs: none.
- Rule 130 declarations: 68. Rule 132 declarations: 1.
- Priority benefit denied or challenged: 11. Hague route: 7. Expedited examination: none.
- Average pendency from filing to allowance: 21.5 months. Median: 18.9 months. The longest ran 8.4 years and ten Office actions (Application No. 29/628,141, filed in 2017, five continued prosecution applications, four separate new matter rejections).
Method note: these are application-level counts across the 285 file histories in this week’s review. A single file may contain more than one rejection, objection, declaration, interview or petition, so the categories are not mutually exclusive.
2. Rule 130 Declarations Are Becoming a Core Prosecution Skill
The pattern repeats across dozens of files. The examiner finds a marketplace listing or other web disclosure and rejects under 102(a)(1). The usual answer is a declaration under Rule 130(a) establishing that the disclosure was made by an inventor or joint inventor, or that the subject matter disclosed was obtained directly or indirectly from one. A second route, Rule 130(b), disqualifies a later disclosure where the same subject matter was publicly disclosed earlier by an inventor or joint inventor, or by someone who obtained it directly or indirectly from either of them. The two tracks follow 35 USC 102(b)(1)(A) and (B), and they call for different evidence.
Across the files reviewed, corroboration was the recurring difference between declarations accepted on the first response and declarations that drew further scrutiny or a final rejection. Corroboration is not a categorical requirement, and sufficiency is judged on the whole record, but this week the files without it fared worse.
Several examiners now say so explicitly. In Application No. 29/977,605 (rack mount kit) the examiner rejected the first declaration as an uncorroborated assertion, citing EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., 859 F.3d 1341 (Fed. Cir. 2017) and MPEP 716.01(c) and 2155.02, and made the rejection final. The applicant answered after final with an extract from the Netherlands Chamber of Commerce showing that the trade name on the Amazon listing belongs to the applicant and that the inventor sits on its board. The after-final submission was entered, the rejection was withdrawn, and the claim was allowed without a continuing application. Two Innovelis applications, Application No. 30/015,501 and Application No. 30/016,291, went the same way: attorney argument plus trademark ownership was called a naked assertion, and the cases turned only after declarations were filed.
The applicants who filed proof with the first declaration did not have that problem. The evidence that worked:
- Government registries. In Application No. 29/954,238 (pen clip), a Chinese enterprise credit registry report showed the Amazon seller entity is solely owned by the inventor, who is its legal representative.
- Trademark and entity records. In Application No. 29/963,020 (pet tag), the storefront brand did not match the applicant’s name, so the inventor attached the USPTO trademark registration for the brand, owned by the applicant LLC, plus the state formation records for the company he controls.
- Contracts with the discloser. In Application No. 29/942,341 (smart home gym), a third-party influencer’s YouTube review was the reference. The applicant produced the manufacturer’s authorization to its trading company, the trading company’s promotion contract whose attachment names the specific channel, and the email thread with the reviewer before publication.
- Platform back-end records. Amazon Seller Central inventory and order pages, visible only to the account owner, carried the day in Application No. 30/016,000 (chandelier). In Application No. 29/981,329 (earring tool) the declarant used the Shopify domain record, the review app’s back end to match a reviewer to a sales invoice, and the image upload timestamp.
One practical caution from the same batch: in Application No. 30/016,000 an otherwise sufficient declaration drew a final rejection because it referred to the wrong Office action date. A corrected declaration was accepted. Examiners are reading these closely enough that a clerical slip can cost a round.
Attacking the Date, Not Just the Attribution
Three files show that the date the examiner assigns to a web page is often wrong, and that it can be attacked directly.
In Application No. 29/927,736 (tool for conduits) the examiner dated a Home Depot listing to 2012 using its oldest customer review. A Rule 132 declaration from the applicant’s director of e-commerce explained that the retailer reuses one SKU across product generations, overlays the new image, and merges the old reviews, so the review date said nothing about the design pictured. The examiner then found a 2024 seller reply on the same page calling the tool “our latest model” and withdrew the rejection.
In Application No. 29/950,838 (scraper spoon spatula) the Amazon “date first available” put the listing more than a year before filing. A message from Amazon Seller Partner Support fixed the actual ASIN creation date at September 17, 2023, inside the grace period. In Application No. 29/941,677 (tooth-shaped bag) the inventor swore that her Etsy listing had previously held other products and that Etsy keeps no public record of image swaps, moving the first disclosure of this design just inside the one-year window.
The Shield Nobody Uses
Four files used the applicant’s own earlier disclosure to disqualify a later third-party disclosure under 102(b)(1)(B), which remains rare in design practice. In Application No. 29/994,289 (label printer) a Rule 130(b) declaration proved the inventors’ April 2024 Tmall listing with seller-only records and knocked out a Chinese design registration published six months before filing. In Application No. 29/997,014 (toilet seat cover) the applicant’s authorized Amazon listing removed the listing itself and then removed two later British and European registrations as intervening disclosures. In Application No. 29/977,146 (folding pad) the examiner called the applicant’s earlier listing a “shielding reference” in so many words. In Application No. 29/979,696 (West Elm lamp) a single attribution declaration for the employer’s Instagram reel also disposed of a later magazine article.
Two limits worth remembering. Under 35 USC 102(b)(1)(B) the exception reaches only the subject matter the inventor disclosed first, and none of these declarations compared the two disclosures feature by feature. And a Rule 130(b) declaration necessarily fixes the date and content of an earlier public disclosure on the record, which is worth weighing against foreign filing plans and other novelty regimes before choosing that route.
3. Obviousness After LKQ: New Vocabulary, Familiar Analysis
There were 19 obviousness rejections. LKQ v. GM, 102 F.4th 1280 (Fed. Cir. 2024) (en banc), discarded the rigid Rosen and Durling requirements that a primary reference be “basically the same” as the claimed design and that a secondary reference be “so related” to it. It did not do away with the primary reference itself, which will usually be the closest analogous art. In practice this week, examiners framed the primary reference as having design characteristics “visually similar” to the claim and then listed the differences. The vocabulary has changed more than the structure has. The reason to combine was usually boilerplate, most often “simple substitution of one known design element for another,” invoking the ordinary designer’s “experience, creativity, and common sense” with little case-specific support. LKQ permits those considerations. What it still requires is a record-supported, non-hindsight reason why the ordinary designer would modify the primary reference to arrive at the claimed design’s overall visual appearance. None of the 19 files shows evidence or argument on secondary considerations.
How the 19 came out: eight were withdrawn on argument alone, six fell when the primary reference was removed by a Rule 130 declaration or by perfecting priority, and five were overcome by amendment, usually by claiming more features in solid lines.
Three responses are worth copying.
Build the combination and look at it. In Application No. 29/982,607 (lighting fixture trim) the examiner combined an Amazon listing for a loose crystal bead with an Amazon chandelier that showed a faceted element between two cylindrical segments. Counsel scaled the chandelier’s cylinders and shims to fit the bead’s small bore and put the resulting image in the record, their word for it being a “Frankenstein” image. The combination produced a bulbous bead on skinny rods, nothing like the claimed design, whose faceted element is only slightly wider than its cylinders. The response also argued that the secondary reference’s disclosure of the missing feature did not itself explain why an ordinary designer would select that feature and apply it to the primary design, and marshalled the four post-LKQ PTAB design decisions: Next Step Group v. Deckers (IPR2024-00525), A&A Global Imports v. Lerman Container (IPR2024-01138), Arashi Vision v. GoPro (IPR2024-01434) and Ex parte Chen (Appeal 2024-002635). Allowed on the first response, with no interview and no final action.
Use the structure of the rejection. In Application No. 29/885,011 (golf towel) the examiner cited In re Lamb, 286 F.2d 610 (CCPA 1961), to dismiss the change from a square to a rectangle as a mere change in proportion. The applicant answered that Lamb was a single-reference comparison in which a longer, slimmer version of a cutlery handle created no new overall visual impression, and that the examiner’s own resort to a secondary reference, plus her comparison chart showing materially different proportions, showed this was not that case. The rejection was withdrawn as overcome by argument.
Translate, do not repeat. In Application No. 29/882,067 (children’s bottle) the examiner rejected the applicant’s first response because it argued the Rosen “basically the same” standard, which the examiner said LKQ had superseded. After final, the applicant made the same visual points in LKQ’s own terms, from the viewpoint of an ordinary designer of children’s bottles and on overall impression. The examiner then withdrew the rejection because “in the crowded art of drinking containers, the subtle differences shown” are patentably distinct. The examiner’s reasoning is a useful prosecution example: in a crowded field, small visual differences may carry more weight when the differences are assessed from the viewpoint of the ordinary designer and against the relevant prior art. Practitioners can invoke that reasoning in analogous records, while grounding the argument in the particular claimed design and references.
On analogous art, the record is thin. Sumitomo argued in Application No. 29/938,329 that plastic poultry netting is not analogous to a metal honeycomb mesh, invoking Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), and In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021), for the proposition that a design claim is tied to its article of manufacture. The examiner’s answer was that “both the prior art and the claimed design are meshes.” Neither case supplies the post-LKQ analogous art test, but both support the view that the article is not beside the point. In Application No. 29/890,621 (Wells Fargo icon) the examiner asserted that logos are analogous art to GUI icons because “graphic designers work in both,” with no supporting evidence, and that case was resolved by amendment instead. In Application No. 29/957,531 (Husqvarna) the field was defined by function: articles that control or capture round filamentary material. Where the record does not explain why an ordinary designer would look to the asserted field, or why the reference is analogous art at all, there is room to attack the evidentiary basis and the hindsight risk. That room went largely unused this week.
Two 103 rejections never reached the merits at all. In Application No. 29/986,120 (rice washing bowl) the primary reference was a Facebook post dated between the Japanese priority date and the US filing date; filing the certified copy of the priority document removed it. In Application No. 30/011,353 (faucet) the primary reference was the brand owner’s own online installation manual, and an OEM supply chain declaration removed it.
4. Drawing Rejections: Clarifying Without Automatically Redrawing
Drawing-disclosure rejections remain the everyday work of design prosecution, with 191 of them this week. The usual cure, converting the unclear features to broken lines, gives away scope. Several applicants found other ways. None of these substitutes for adequate visual disclosure, which the drawings still have to carry, but each clarified what the drawings already showed.
- Color as a disclaimer. In the Hague case Application No. 35/523,912 (floor cleaning appliance) the applicant used color to identify portions stated to form no part of the claimed design, and the Office accepted that on this record with no new matter objection.
- Exhibits instead of amendments. In Application No. 29/936,172 (fishing rod and reel holder) an after-final exhibit of eight rotational CAD renderings supported the argument that the allegedly inconsistent bend angle was a projection artifact in the original views. Withdrawn on argument alone, with no continuing application. In Application No. 29/856,717 (electric scooter) scaled and aligned crops of two existing views showed a cutout in the neck that explained the apparent inconsistency.
- Statements that define the convention. In Application No. 29/865,404 (vented susceptor) the examiner drafted the statement herself: shaded surface areas are claimed between the broken lines. In Application No. 30/042,222 (container) the applicant kept the shading and added that the broken line elements within the shaded area form no part of the claimed design. In Application No. 29/931,664 (basketball hoop) the applicant declined the examiner’s suggestion to make broken lines solid and instead added a statement that those lines serve both as unclaimed edges and as the claim boundary.
- Photographs filed at the outset. In Application No. 29/915,883 (candle holder) reference photographs filed as appendices with the original application supported adding solid claimed lines later, an amendment that might otherwise have drawn a new matter objection.
- A statement in place of re-rendering. In Application No. 30/009,323 (woven stool) the record statement that the detail view’s weave covers all woven portions was memorialized as an “Examiner’s Understanding” in the notice of allowance. Useful, though the drawings remain the principal definition of scope. In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018), asks whether the claim and the visual disclosure inform the public of the design’s scope with reasonable certainty, which prose can explain but not replace.
On the other side, the twin mounting bracket files, Application No. 29/930,544 and Application No. 29/930,545 show the written description risk in later claiming or disclaiming part of a surface that was originally shown undivided. Under In re Owens, 710 F.3d 1362 (Fed. Cir. 2013), possession of the larger area does not by itself establish possession of a subpart an applicant selects later. Adding shading to a surface that was unclear as filed was new matter here, and converting that shading to broken lines was refused as new matter too. The only accepted fix was to delete the shading and add a statement disclaiming the surface, which required a continued prosecution application. And in Application No. 29/933,274 (color-coded IV line) converting features to broken lines at the examiner’s suggestion dropped the color from those elements, which drew a final new matter rejection of its own.
5. How Much a Priority Date Is Carrying
Eleven histories involved a priority claim that was denied or challenged. In several of them, the priority date was the only thing standing between the applicant’s own product and a 102 rejection, which is worth knowing before the date is put at risk. A continuation or divisional carries the earlier date only for subject matter the earlier application supports, and in design cases the drawings do that work.
In Application No. 29/947,293 (desk) the examiner found the benefit claim defective because the application data sheet also claimed the benefit of a provisional application, which 35 USC 172 makes unavailable to designs. Without the chain back to the utility parent, the applicant’s own utility patent became anticipating art. A corrected data sheet restored the benefit claim and the rejection was withdrawn, with no argument needed on the merits.
In Application No. 29/903,927 (pet water dispenser) the examiner denied the Chinese priority claim because the US claim covered the bowl interior and the top of the base, which the Chinese application did not show. Without the earlier date, an Instagram post made one day before the US filing became prior art, and a Rule 130 declaration was needed to remove it. A useful reminder that the written description standard for a foreign priority claim is measured against the claim as filed here.
In Application No. 30/031,788 (faucet), the final rejection measured the grace period from the divisional’s own filing date rather than the parent’s, which put an Amazon listing outside the one-year window. In an after-final reply, the applicant invoked 35 USC 121, the effective filing date definition in 35 USC 100(i), and the application’s asserted compliance with 35 USC 120. The applicant argued that the divisional was entitled to the May 28, 2024 filing date of Application No. 29/944,407, rather than its November 7, 2025 filing date. The rejection was withdrawn. The withdrawal came without a reasoned discussion of priority entitlement, however, so the file does not establish how the Office assessed the parent’s written description support for the issued claim.
6. Enforcement Watch
For those of us who litigate these patents, the file histories carry more than prosecution lessons. None of what follows is a criticism of how any of these applications was handled. Every one of them issued, and the choices that get a case allowed are made under time and budget pressure with the client’s goals in view, which the file wrapper never shows. The point is only that the same choices are read later by an accused infringer, and it is worth seeing what that reading looks like while the file is still open.
Cancelling an embodiment is the event to watch. In Application No. 29/964,044 (planter) the Office action treated the square and rectangular planters as obvious variants of one another and made no restriction requirement. The response elected the rectangular planter without traverse and cancelled the square one “without prejudice or disclaimer,” and the notice of allowance notes the cancellation as having been made despite there being no restriction requirement. An accused infringer will read that record, but this is not a clean Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), case: there the applicant cancelled unelected embodiments in response to an actual restriction requirement, to secure the patent. No restriction was made here, which weakens the surrender argument considerably. The express reservation is context the patent owner would rely on, though a reservation does not by itself answer whether the record shows an objective surrender. It is a useful pairing to have in mind for any case where an embodiment is going to come out.
A few others where the record now defines the edges of the claim: in Application No. 29/987,959 (SharkNinja roller) a restriction requirement communicated by telephone separated a clip from two partial claims to different portions of the cylinder, the clip was elected without traverse, and no divisional appears in this file. In Application No. 29/917,611 (food packaging bag) the applicant traded breadth for certainty, converting every broken line to solid to claim the whole bag and then distinguishing the art on the tear tab and angled base. In Application No. 30/012,547 (pet vest) an Amazon anticipation was overcome by identifying seven small differences. Those distinctions are now part of the prosecution record and may give an accused infringer material to work with later. And in Application No. 29/972,765 (Abbott analyte sensor) two double patenting rejections were overcome by reallocating solid and broken lines rather than by a terminal disclaimer, avoiding the terminal disclaimer’s common-expiration-date consequence, though the examiner gave no reasoning on patentable distinctness for a challenger to work against.
7. What to Take From the Week
- If the client sells online before filing, build the Rule 130 package at filing: who owns the storefront, who authorized the seller, and what the platform’s own records show about the date.
- Treat marketplace dates as evidence to be tested, not as facts. Seller support tickets, SKU histories and upload timestamps have moved references in and out of the grace period.
- Under LKQ, examiners are still writing Rosen-shaped rejections with boilerplate reasons to combine. The record is wide open on the reason to combine, on analogous art, and on secondary considerations, which nobody used this week.
- Before answering a 112 by dashing out features, ask whether an exhibit, an overlay, or a statement on the record will do the job without giving up scope.
- When an embodiment is going to be cancelled, make the record say why and preserve the procedural context. An election made in answer to an actual restriction requirement can carry different consequences later than a voluntary cancellation, and a reservation of rights helps explain intent without curing an objectively supported surrender.
