This design patent application highlights how the LKQ v. GM en banc decision emphasized the requirement of a record-supported reason for combining references and that the combination of prior art references must achieve the claimed design. The applicant’s success lay not only in identifying specific design differences but also in articulating how those differences impacted the designs as a whole.
Applicant claimed an ornamental design for a Litter Box, with representative Figure 1 as follows:
The examiner rejected the claim under 35 U.S.C. § 102(a)(1) (anticipation) and 35 U.S.C. § 103 (obviousness). The claim also was rejected under 35 U.S.C. § 112 due to drawing inconsistencies. The anticipation rejection was based on the “Deo Toilet Blue” prior art reference (see below), and the obviousness rejection was based on the “Tidy Cat Breeze” prior art reference in view of the “Kobayashi” prior art reference (see below).
The examiner asserted that under the ordinary observer test, the appearance of the “Deo Toilet Blue” reference is substantially the same as the claimed design, leading to a finding of anticipation.
Regarding obviousness, the examiner contended that the “Tidy Cat Breeze” reference has basically the same design characteristics as the claimed design, with the only substantial difference being “the Tidy Cat Breeze appears to have a straight angle from the lower front section to the higher back section[.], [w]hereas the claimed design has a slight return at the back.” The examiner made three main points regarding the combination of references. First, the claimed design has no patentable distinction over the combination of references. Second, the modification of the basic reference in light of the secondary reference 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. (citing In re Rosen, 673 F.2d 388 (CCPA 1982) and In re Glavas, 230 F.2d 447 (CCPA 1956). Third, the primary reference has specific design characteristics that are the same as the claimed design and when modified with the secondary reference does not destroy the fundamental overall aesthetic appearance of the design. (citing In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993).
The applicant requested an examiner interview, and the interview summary states in part regarding the obviousness rejection: “Informed Applicant that they must submit all arguments for 35 U.S.C. § 103 in writing, due to our office does not have a final position on how we interpret the law on our side, based on the LKQ ruling.”
For a written response, the applicant submitted replacement figures that overcame the Section 112 drawing inconsistency rejection. Regarding anticipation, applicant argued the Deo Toilet Blue is different from the claimed design in various material respects. Specifically, in the claimed design, the back portion is concaved towards the center, whereas the back portion of Deo Toilet Blue is straight from the right-side wall to the left side wall. Additionally, in the claimed design, the side portions are arcuately raised towards the center, whereas the side portions of Deo Toilet Blue are straight from the front section to the back section.
Regarding the obviousness rejection, the applicant cited LKQ Corp. v. GM Global Technology Operations LLC, 102 F4th 1280 (Fed. Cir. 2024) (en banc) and made two primary points. First, the applicant argued that due to the differences between the claimed design and the primary and secondary references, the combined overall visual appearance of the prior art references would be noticeably different than the claimed design. Specifically, as discussed above, the back portion of the claimed design is concaved towards the center, whereas the back portion of “Tidy Cats Breeze” is straight from the right-side wall to the left side wall. Further, secondary reference Kobayashi fails to supply what Tidy Cats Breeze lacks because while the back portion of Kobayashi is slightly concaved towards the center, the depth and angle of concavity are both different from the claimed design. Applicant argued that the back portion of the claimed design gives the litter box an overall round visual profile, whereas the back portion of Kobayashi gives the litter box a sharper visual profile. Therefore, even if the primary and secondary references were to be combined, the overall visual appearance would be noticeably different from the claimed design, especially to a designer of ordinary skill in the art.
The second point argued by applicant is there was no evidence on record that a designer of ordinary skill would have been motivated to modify the combination of Tidy Cats Breeze and Kobayashi in the way proposed by the examiner.
Based on the applicant’s response, the examiner withdrew all the rejections and explained the rationale for the withdrawals in the Examiner’s Reasons for Allowance.
Comments: LKQ relaxed the standard for a primary reference while simultaneously emphasizing the need for a record supported reason to combine references. Prior to LKQ, the boilerplate reason examiners gave to combine references is when “they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” (citing In re Glavas, 230 F.2d 447, 450 (C.C.P.A 1956)). Here, the applicant focused on the absence of a record supported reason for combining references, and the examiner did not specifically respond to that point. Rather, the examiner apparently agreed with the applicant that even when combining references, the claimed design would not be achieved due to the differences in the prior art references and the claimed design. Failure to achieve the claimed design is one of the arguments an applicant has to overcome an obviousness rejection.
Note that LKQ did not eliminate similarity in overall appearances of the primary and secondary references as a reason to combine references. However, the rule also has been that the references and record evidence must suggest the overall appearance of the claimed design and not just its components. See In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1992) (“To support [such] a rejection … , the teachings of references must be such as to have suggested the overall appearance of the claimed design …. Thus, if the combined teachings suggest only components of the claimed design but not its overall appearance, a rejection under section 103 is inappropriate”) (Quoting In re Cho, 813 F.2d 378, 382 (Fed. Cir. 1987). In this application that examiner appears to have agreed that given the differences in designs, the combination of references did not suggest the overall appearance of the claimed design.
Finally, note how the applicant did not just list out the design differences separately, but rather explained how the differences impacted the designs as a whole: “As can be seen in a side-by-side comparison below, the back portion of the claimed design gives the litter box an overall round visual profile, whereas the back portion of Kobayashi gives the litter box a sharper visual profile.” This type of explanation is necessary because in an obviousness analysis, the claimed design and the prior art are compared as a whole.
