USD1,053,376 - Issue Date: December 3, 2024
Rejection: The examiner rejected the design claim under Section 103 as being obvious in light of a combination of the EU Patent No. 006629317-0005 (“Therabody”) and Chinese Patent No. 306055743 (“Zheng”). The rejection was based on similarities between the “Therabody” reference and the claimed design, as well as proposed modifications incorporating elements from “Zheng.”
Applicant’s Arguments: The applicant argued that the rejection was not properly formulated under the updated obviousness framework established by the Federal Circuit in LKQ Corp. v. GM Global Tech Operations LLC., 102 F.4th 1280 (Fed. Cir. 2024) Specifically, applicant argued the rejection failed to comply with the four-factor analysis required for obviousness determinations, such as the level of skill in the art and the reasoning behind modifications without hindsight.
The applicant provided detailed distinctions between the claimed design and the cited references, particularly emphasizing differences in proportions, tapering, and transitions in the cylindrical sections of the design. These differences created a substantially different visual impression compared to the cited prior art.
Examiner’s Withdrawal of Rejection: After considering the applicant’s responses and amendments, the examiner acknowledged that the arguments regarding the distinctiveness of the design and the insufficiency of the proposed modifications to achieve the claimed appearance were convincing. The rejection under § 103 was withdrawn.
Comments: This prosecution highlights two important principles in the LKQ obviousness analysis. Although LKQ eliminated the requirement that a primary reference be “basically the same” as a claimed design, other obviousness principles were retained and reinforced. One such principle retained is that the proposed combination must result in the claimed design. The MPEP states that “[t]o establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.” Section 1504.03 (II). Here, the applicant emphasized that the Zheng reference did not teach or suggest the proportions of the cylindrical portions of the claimed design: “[w]hether the lower cylindrical feature of Zheng is combined with Therabody such that its height or its width aligns with that of the claimed design, the overlays below show that the combination does not result in the claimed design.”
A second important principle is that when comparing the claimed design with the prior art, the designs must be compared as a whole. This principle is intended to prevent the obviousness analysis from focusing on individual design features. Here the applicant first argued the specific distinctions in proportions. The applicant then explained how these distinctions affected the appearance of the designs as a whole: “[t]he distinctions above give Zheng a thin, elongated, and segmented appearance, in contrast to the claimed design’s stout, sturdy proportions and substantially continuous profile.” Applicants arguing for non-obviousness should always explain how the individual differences with the prior art create an overall distinctive appearance.
