Design patent prosecution can be a complex and nuanced process, particularly when determining whether a design for an automotive part is obvious in light of prior art. A recent prosecution history involving a fender flare design provides valuable insight into how the Patent Office applies 35 U.S.C. § 103 and evaluates whether a prior design qualifies as a valid primary reference. This case highlights the significance of evolving obviousness factors such as the impact of a crowded field of prior art and the classification of a design as a replacement part. It also demonstrates how easily these concepts can be misunderstood or conflated, emphasizing the need for clarity in their application.
Factual Background of the Prosecution
In App. No. 29/860,524 (now D1060164, issued 4 Feb 2025), the examiner initially rejected the claim under 35 U.S.C. 103(a), asserting that the claimed design was obvious over U.S. Patent D591,654 (Williams) in view of D795,768 (Platto). The examiner reasoned that Williams’ design was “basically the same” as the claimed invention, with the only notable difference being the angle and depth of certain surfaces. Platto was cited as evidence that such modifications were known, leading to the conclusion that the claimed design was an obvious variation.
Application of LKQ v. GM
The applicant contended that Williams did not qualify as a valid primary reference under the Rosen-Durling test, which at the time required a primary reference to be “basically the same” as the claimed design before any modifications could be considered. In response to the examiner’s assertion that Williams had the same basic shape as the claimed design, applicant argued that most wheel fenders have the same “basic shape” because they functionally are required to have a curved shape that goes over the wheel. The applicant argued further that in a crowded field like automotive fender parts, even small differences can create a distinct overall impression. While this point was valid (discussed below), the applicant mistakenly applied the ordinary observer test, which is relevant to anticipation under 35 U.S.C. § 102, instead of focusing on the ordinary designer standard required for obviousness under 35 U.S.C. § 103. This misapplication may have stemmed from the panel decision in LKQ Corp. v. GM Global Tech. Operations LLC, 2021-2348 (Fed. Cir. January 20, 2023), which addressed both anticipation and obviousness and discussed both the ordinary observer and ordinary designer standard. However, since the present application involved only an obviousness rejection, the correct standard was that of a designer of ordinary skill in the art. The applicant also argued that the examiner failed to establish a clear motivation for combining the Williams and Platto references to arrive at the claimed design.
The examiner then issued a final rejection, reiterating that Williams remained a valid primary reference since it shared the same overall visual impression as the claimed design. The examiner argued further that minor curvature differences were not significant enough to distinguish the designs and the slight modifications would have been obvious to a designer of ordinary skill (citing the principle from In re Stevens, 81 USPQ 362 (CCPA 1949), that obvious changes in proportions are not a patentable distinction). Finally, regarding motivation to combine references, the examiner was not specific, but cited only the general principle from In re Glavas, 230 F.2d 447 (C.C.P.A. 1956) that “[t]his modification of the basic reference in light of the secondary prior art is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other.”
The applicant then filed a notice of appeal and an appeal brief, arguing that the Williams reference does not qualify as a “basically the same” primary reference due to multiple distinguishing features from the claimed design. Specifically, that the fender flare has a more linear base and leg structure, shallower front-to-back depth, and a larger radius of curvature at the bottom of the legs, all of which are significant differences that a designer of ordinary skill in the art would recognize. Applicant argued that the examiner’s reliance on a generic overall shape similarity is flawed because all fenders share a curved form by necessity, making minor differences even more meaningful in the design context. Applicant also cited case law, including High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013) and LKQ Corp. v. GM Global Tech. Operations LLC, PGR2020-00055, Paper 33 (P.T.A.B. Oct 8, 2021) and provided examples demonstrating that prior art references with similar or greater similarities than Williams were deemed unsatisfactory as primary references.
Applicant also argued that even if Williams were considered a valid primary reference, its combination with Platto would not result in the claimed design. Rather, the Williams-Platto combination would create a fender flare with a gradual and consistent radius, whereas the claimed design features distinct linear base and leg segments with sharper corner radii. Finally, applicant argued the examiner underestimated the significance of the claimed design’s unique design features and wrongly asserted that the differences in curvature are insignificant, particularly because designers of ordinary skill in the art would readily recognize and appreciate these differences given the long-standing conventional forms of fenders.
Upon reconsideration, the examiner withdrew the rejection and allowed the application, acknowledging that the claimed design’s curvature and side shape differences were sufficient to distinguish it from Williams. The examiner began his comments by emphasizing that KSR v. Teleflex (the examiner likely meant LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) – decided while this prosecution was pending) had removed the requirement that a primary reference have “basically the same” design characteristics as the claimed invention and that a more flexible standard should be applied. The examiner also made the point that “since fender flares are manufactured for different vehicles, each with different body contours, the same fender flare design, applied to a different model of vehicle would also necessarily have minor, utilitarian modifications applied to the design to fit each vehicle.” According to the examiner, “[t]hese changes would be considered to be obvious to a designer of ordinary skill in the art, and would not constitute a significant difference between designs.” Despite this observation, the examiner acknowledged there were differences between the claimed design and the Williams reference, particularly in the curvature of the fender flare and side curvature. These differences were determined to be significant enough to distinguish the claimed design from the prior art, and the obviousness rejection was withdrawn.
Notably, the applicant did not focus on a lack of motivation to combine references and only argued that (1) Williams was not a proper primary reference and (2) the Williams-Platto combination would not result in the claimed design. This is understandable because the appeal brief was filed on May 1, 2024, twenty days before LKQ v. GM, supra, was decided on May 21, 2024. In LKQ, the Federal Circuit shifted the obviousness focus from the primary reference requirement to the need for an examiner to provide a record supported reason (without hindsight) for why references are being combined.
Key Takeaways for Design Patent Prosecutors
This prosecution history highlights several important takeaways for attorneys and applicants navigating design patent obviousness rejections under the new LKQ framework, particularly in the context of the ongoing legal battle over design patents between automotive companies and replacement part manufacturers.
Primary Reference Requirements have been Relaxed
First, while the Rosen-Durling test was historically a key element in determining whether a prior design could serve as a primary reference, the Federal Circuit, in its en banc decision in LKQ, eliminated the requirement that a primary reference must be “basically the same” as the claimed design. This decision represents a shift towards a more flexible standard for assessing design patent obviousness – at least with regard to the primary reference requirement.
Importance of the State of the Prior Art
Second, the state of the prior art plays a critically important role in an obviousness analysis. Both ordinary designers and ordinary observers are presumed to be aware of relevant prior art and capable of distinguishing between prior art designs. Therefore, in a crowded field of prior art, both ordinary observers and ordinary designers have heightened perceptive abilities and are able to distinguish overall designs from each other based on even small differences. This result may seem counterintuitive to those unfamiliar with design patent law and who may assume that if there are hundreds of similar designs for a given vehicle part, then small changes should not create non-obvious and patentable designs.
Although the increased perceptive ability of an ordinary observer in a crowded prior art field generally is well established and well known due to the discussion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (“[w]here there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.”), the increased perceptive ability of the ordinary designer has support as well. See In re Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993) (distinguishing the facts in In re Hopkins because the field of loud speaker design is much less crowded than that of ornamental vase design). See also App. No. 29/734,406 DPP 25-27 (Jan. 3, 2023) (citing Vanguard Identification Sys., Inc. v. Kappos, 407 Fed.Appx. 479 (Fed. Cir. 2011); Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012); and MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014), and contending that in general, when the art is crowded, a designer of ordinary skill may perceive a relatively small detail as creating a different overall visual impression).
Status as Repair or Replacement Part
Third, the status of a design as a repair or replacement part should affect an anticipation analysis, but arguably not an obviousness analysis. In an anticipation analysis, the standard is that of an ordinary observer. See Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (the ordinary observer test is the sole test for design patent invalidity under § 102). In the replacement or repair part context, the ordinary observer, who is typically a purchaser, is particularly attuned to small differences because they seek an exact match for the original part. In contrast, in an obviousness analysis, the standard is that of an ordinary designer. See High Point, supra, at 1312. Since a designer of ordinary skill is involved in the original design process rather than replacing an existing part, the same principle arguably should not apply.
Effect of Generic Shapes
Fourth, the relationship between design patent concepts for generic shapes in a particular field is complex and evolving. In this case, the applicant and examiner made conflicting arguments regarding the impact of all fender flares having essentially the same design. On one hand, the applicant contended that the examiner’s reliance on overall shape similarity was flawed, as most fenders inherently share a curved form. Because of this necessity, even minor differences should carry significant weight in the obviousness analysis. Conversely, the examiner argued that since similar fender flares are designed for various vehicles with distinct body contours, applying the same flare design to a different vehicle would require minor utilitarian modifications. These functional adjustments, the examiner asserted, would be obvious to a designer of ordinary skill in the field. Additional principles that may become relevant is when the type of substitution made customarily occurs in a given field, is driven by market demands, or consists of ornamental features commonplace in the relevant field, a finding of obviousness may be more likely. See Smith v. Whitman Saddle Co., 148 U.S. 674 (1893) (industry custom); LKQ, supra, 102 F.4th at 1299-1300 (market demands, industry customs, and ornamental features commonplace in the relevant field). How these different approaches interact and ultimately effect the obviousness analysis of automotive parts remains to be seen.
Distinguishing between Ordinary Observers and Ordinary Designers
Fifth, it is important to distinguish between the obviousness test under 35 U.S.C. 103, which evaluates a designer of ordinary skill’s perspective, and the anticipation test under 35 U.S.C. 102, which is based on the ordinary observer standard. Conflating the two tests, as initially done by the applicant in this case, can lead to flawed arguments, particularly if the argument concerns factors only related to the purchase of the product by an ordinary observer, such as replacement part status, cost of the item, whether it is purchased at retail or wholesale, and whether it is typically purchased on impulse.
Shift from Primary Reference to Motivation to Combine
Sixth, LKQ has shifted the focus in obviousness determinations from establishing a qualifying primary reference to requiring examiners to provide a record supported reason (without hindsight) for combining references. Examiners no longer can simply cite Glavas and state that modifying a basic reference with secondary prior art is appropriate because the references are “so related.” Instead, they must offer specific and detailed reasoning, which may be challenging given their limited resources. Although this issue initially arose but was not fully developed in the present prosecution, it is likely to become a major point of contention in future prosecutions and cases post-LKQ.
Maintaining Reliance on Traditional Arguments
Seventh, although LKQ significantly changed design patent obviousness law, many traditional arguments against obviousness still apply. For example, even if the cited references can be combined, they may not produce the claimed design – a point that proved successful in this prosecution. Other traditional factors to consider are that a reference teaches away from the claimed design and the proposed combination destroys the fundamental characteristics of the primary reference. To read more about these other factors, please see Understanding Design Patent Obviousness Principles following LKQ v GM.
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.
