Introduction
The landmark LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) decision reshaped the landscape of design patent law and is primarily known for its impact on the obviousness test. However, the recent prosecution history (App. No. 29/845,039) of a design patent for a Potato Piece (USD1,057,348) highlights how principles emphasized in the LKQ panel decision, 2022-1253, 2023 U.S. App. LEXIS 1411 (affirmed in the en banc decision) can be used to overcome anticipation rejections under 35 U.S.C. §102. This case study demonstrates how the ordinary observer’s perspective and the cumulative impact of design differences can play a critical role in achieving allowance.
Non-Final Rejection: Examiner's Analysis
The USPTO initially rejected the claimed Potato Piece design under §102, citing U.S. Design Patent D914,804 to Walker. The Examiner applied the ordinary observer test to the anticipation analysis as required by International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009), and argued that the overall visual impression of the claimed design was substantially the same as Walker’s design. The rejection relied on a comparison of general design elements, including the curvature, corners, and proportions of the designs, concluding that no patentable distinction existed.
Applicant’s Response to the Non-Final Rejection
In response to the non-final rejection, the Applicant argued that the claimed design was patentably distinct from Walker’s design based on several key differences:
- Subtle Curvature:
The Applicant highlighted that the claimed design featured gentle and subtle curvature, contrasting with the deeper and more pronounced grooves in Walker’s design. - Corner Configuration:
The corners of the claimed design were described as smooth and rounded, differing significantly from Walker’s sharp, angular, pinwheel-like corners. - End Features:
The Applicant pointed out that Walker’s design did not claim the ends of the design, whereas the present application specifically included end details, creating additional visual distinctions. - Proportional Differences:
The Applicant emphasized that the claimed design was over twice as long as Walker’s design, altering the proportions and overall visual impression.
The Applicant argued that the combined effect of these differences created a distinct overall visual impression that would not deceive an ordinary observer into believing the designs were the same.
Final Rejection
The Examiner issued a final rejection, maintaining the rejection under §102. The Examiner acknowledged the differences presented by the Applicant but concluded that these differences were minor and did not alter the overall visual similarity between the two designs. Specifically, the Examiner argued that the analysis of anticipation must focus on the overall appearance, rather than isolated elements, and found the designs to be substantially the same in their overall impression.
Applicant’s Response to the Final Rejection
In response to the final rejection, the Applicant repeated the key distinctions between the designs and expanded on the arguments:
- The gentle curvature and rounded corners of the claimed design created a softer, less angular appearance compared to Walker’s design.
- The inclusion of claimed end features distinguished the design, adding unique elements absent in Walker.
- The proportional differences (with the claimed design being over twice as long) resulted in an overall visual impression that was significantly distinct from Walker.
The Applicant also cited LKQ Corp. v. GM Global Tech. Ops. LLC, to support the argument that even relatively small differences can be significant in the context of a design patent when those differences affect the overall visual impression.
The Applicant emphasized that the ordinary observer test, as articulated in International Seaway, requires an overall comparison of designs. In this case, the cumulative effect of the differences created a distinct overall appearance, making the designs not substantially the same. The applicant compared the design differences in the claimed and prior art front fender designs in LKQ to the design differences in the claimed and prior art Potato Piece designs in the application.
Allowance
After reviewing the Applicant’s response, the Examiner issued an Examiner’s Statement of Reasons for Allowability, withdrawing the §102 rejection and allowing the application. The Examiner agreed that the combination of differences highlighted by the Applicant rendered the claimed design patentably distinct from Walker.
Key findings in the Examiner’s analysis included:
- The subtle curvature and rounded corners of the claimed design contrasted sharply with Walker’s deep grooves and angular corners.
- The inclusion of end features added unique elements not present in Walker’s design.
- The proportional differences, with the claimed design being significantly longer, contributed to a distinct overall visual impression.
While the Examiner noted that these differences might appear minor in isolation, their combination was sufficient to establish patentability. The application was allowed based on the cumulative impact of these distinctions.
Comments and Observations:
1. Role of the Ordinary Observer Standard
One of the most important aspects of the LKQ panel decision, affirmed in the en banc ruling, is the refined definition of the “ordinary observer.” According to Federal Circuit case law, the ordinary observer is the purchaser of the patented article. In Goodyear Tire & Rubber Company v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1117 (Fed. Cir. 1998), the court stated that “the focus is on the actual product that is presented for purchase, and the ordinary purchaser of that product.” Similarly, in KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993), the court determined that “the ‘ordinary observer’ for the purpose of the block design patent is a purchaser of the patented block.”
Although not explicitly mentioned in the prosecution arguments, LKQ addressed the crucial issue of defining the ordinary observer in the context of replacement parts. The court recognized that when it comes to replacement parts, such as auto fenders, the ordinary observer includes both “retail consumers who purchase replacement fenders and commercial replacement part buyers who purchase replacement fenders.” LKQ v. GM panel decision, supra, at *7-8. The significance of this identification was pointed out in the PTAB decision appealed from, which observed that since “both a vehicle owner and repair shop person would desire to return a vehicle in most cases to its original appearance,” … “the ordinary observer readily recognize[s] incongruity associated with a part that does not fit or match other parts of the vehicle it is attached to” and “when considering the overall appearance of a vehicle fender, “details are readily noticed by the ordinary observer.” LKQ Corp. v. GM Global Technology Operations, LLC, IPR2020-00534, p.23 (PTAB August 4, 2021).
A key takeaway is that when responding to strong anticipation arguments during prosecution, applicants should consider arguing that the ordinary observer is more discerning and can better distinguish prior art. Such an argument might be based on factors such as:
- The part being sold as a replacement part (LKQ v. GM),
- The high cost of the item (Hutzler Manufacturing Company, Inc. v. Bradshaw International, Inc., 11 Civ. 7211 (PGG) (S.D.N.Y. July 24, 2012)),
- Sales primarily at the wholesale level (Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007)), or
- Purchases made by experts (Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280, 286 (D. Minn. 1982)).
However, it is important to consider whether making such an argument is necessary to overcome an anticipation rejection. A more discerning ordinary observer who can distinguish the claimed design from prior art during prosecution for patentability may also more easily distinguish it from an accused design during litigation – making infringement less likely. A successful argument during prosecution for a more discerning ordinary observer will be difficult to oppose during litigation.
Additionally, note that when the ordinary observer test was made the sole test for anticipation in International Seaway, it necessarily imported the ordinary observer identification into the analysis. This potentially leads to the paradoxical result that a design patent may be valid or invalid depending on the record evidence of how the article of manufacture is sold and used in the marketplace. For example, if a front fender is only sold as part of a vehicle, then the fender design may be unpatentable because the ordinary observer is less discerning. However, if the front fender also is sold as a repair or replacement part, then the design may be patentable (not anticipated) because the ordinary observer is more discerning about differences with the prior art.
Another example is if the claimed design is applied to an expensive article of manufacture, it may be patentable because the ordinary observer is more discerning. But if the article significantly drops in price for whatever reason, the design may be unpatentable because the ordinary observer is less discerning when considering the purchase of a less expensive item.
These inconsistencies likely resulted from a misapplication of the principle established in Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889), which states “that which infringes if later, anticipates if earlier,” as later applied to design patent law in International Seaway. Another blog post will address this issue in greater detail.
2. Overcoming Design Expedient Arguments
Examiners often argue that minor modifications, such as rounding corners or changing proportions, are insufficient to establish patentability. These types of changes are known as “design expedients”—commonly known or obvious modifications that a designer of ordinary skill would naturally employ without significantly altering the overall appearance. Some typical examples include changing the size or proportions of an existing design, duplicating or multiplying parts, flipping elements from one side to another, or substituting one geometric shape for another.
To counter design expedient arguments, applicants should:
- Emphasize the unique overall appearance of the design,
- Highlight specific features contributing to the overall visual impression, and
- Demonstrate that the differences are significant and contribute to the design’s ornamental distinctiveness.
3. Emphasis on Describing the Design as a Whole
Both the Examiner and the Applicant properly emphasized the requirement to analyze and compare the designs as a whole. This requirement is common in design patent law and is applicable on a number of issues including infringement, anticipation, obviousness, restriction and multiple embodiments, drawing inconsistencies, ornamentality and functionality, written description requirement for amendments, and double patenting. The concept of analyzing “as a whole” a design that consists of individual design elements can at first seem confusing. But the key to understanding this concept lies in recognizing that while a design is composed of distinct parts—such as shapes, lines, textures, and proportions—its legal assessment is focused on the overall visual impression rather than an isolated evaluation of its components. The principle closely follows how the mind of a consumer actually works. As noted by Jerre B. Swann in Configuration Protection Harmonized, 94 Trademark Reporter 1182, 1190-1192 (2004), consumers tend to “perceive objects as coherent wholes, rather than as separable parts.”
The most appropriate and persuasive arguments go beyond a bare description that merely states, e.g., “when the individual differences are considered as a whole, the overall visual impression is not substantially the same.” This approach merely communicates subjective judgment without providing any meaningful analysis and explanation. Rather, the description should explain why the individual differences produce an overall visual impression that is not substantially the same. For example, in this application the Applicant stated “considering the whole of the claimed design and the whole of Walker’s design, the claimed design provides a substantially rounded triangular cross-section, thick and free of significant protrusions and harsh edges, and simple and concise visual effect, while Walker provides a substantially-sharp, pinwheel-like shape with distinctive sharp protrusions, substantial bumped-out convex surface portions, and distinctive deep grooves of concave surface portions, providing an intense and complex visual effect.”
Another example is in In re Rosen, 673 F.2d 388, 391 (CCPA 1982) where the Court described the claimed design as making a visual impression of “lightness and suspension in space,” whereas the Rosen reference “embodies a concept of confinement in space.”
A useful approach is to use adjectives to describe the overall look of the design, such as “the palette has an overall slimmer look than the prior art, owing to the designs’ differing proportions” and “the off-centered placement of the support legs and cross-bar creates an asymmetrical overall appearance in the claimed design, which is dissimilar from the symmetrical appearance of the prior art.”
Another approach is to compare the overall design to another well-known object. For example, “the claimed design has a lip extending beyond the edge of the cosmetic holder, giving the design an overall book-like appearance, substantially different than the overall appearance of the prior art.
