ProSearch Case Table
| Case Citation | Number of Citations | MPEP Section | Legal Principle | Category |
|---|---|---|---|---|
| 3form, Inc. v. Lumicor, Inc., 678 Fed. App'x. 1002, 1011 (Fed. Cir. 2017) | 1 | The obviousness inquiry for design patents "asks whether a design 'would have combined teachings of the prior art to create the same overall visual appearance as the claimed design." | Obviousness | |
| Alan Tracy, Inc. v. Trans Globe Imports, 1995 U.S. App. LEXIS 14253 (Fed. Cir. June 2, 1995) | 5 | Patent drawings showing indeterminate length of straight design features cannot encompass curved design features when there is no indication in the disclosure of curved design features | Indeterminate Lines | |
| Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) | 17 | The ordinary observer test requires proper identification of the ordinary observer and then comparison of the claim against the accused design in light of the prior art through the eyes of the properly identified ordinary observer. | Infringement - Ordinary Observer Test | |
| Auto. Body Parts Ass'n v. Ford Global Techs. LLC, 930 F.3d 1314 (Fed. Cir. 2019) | 2 | The existence of several ways to achieve the function of an article of manufacture increases the likelihood that the design serves a primarily ornamental purpose | Ornamentality | |
| Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997) | 22 | Where the existence of alternative designs is not dispositive of the functional invalidity inquiry, the additional factors to consider include: [1] whether the protected design represents the best design; [2] whether alternative designs would adversely affect the utility of the specified article; [3] whether there are any concomitant utility patents; [4] whether the advertising touts particular features of the design as having specific utility; and [5] whether there are any elements in the design or an overall appearance clearly not dictated by function. | Ornamentality | |
| Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996) | 19 | A design element within the claim of a U.S. design patent application only lacks ornamentality when no other alternative structure can perform the same function. | Ornamentality | |
| Catalina Lighting v. Lamps Plus, 295 F.3d 1277, 1288 (Fed. Cir. 2002) | 2 | The mere fact that each of the elements of a patented design existed in the prior art does not demonstrate that the particular combination of the elements would have been obvious to a designer of ordinary skill in the field, absent some teaching that would suggest combining the elements. | Obviousness | |
| Oralabs, Inc. v. Kind Group. LLC, Civil Action No. 13-cv-00170 (D. Colo. Jul. 28, 2015) | 2 | Even differences in proportion and overall shape can provide a different overall visual impression. | Obviousness | |
| Colida v. Sony Corp., 70 F.3d 130 (Fed. Cir. 1995) | 2 | Every aspect of the design contributes to the overall appearance and must not be broken down into its separate components. | Anticipation - Ordinary Observer Test | |
| Dobson v. Dornan, 118 U.S. 10 (1886) | 4 | Where the claimed design is close in appearance to prior art designs, small differences between the accused and claimed designs are likely to be important to the eye of the hypothetical ordinary observer. | Infringement | |
| Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995) | 6 | Under the ordinary observer test for anticipation, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features. | Anticipation - Ordinary Observer Test | |
| Golan v. Pingel Enter., No. CV 99-3143 MRP, 1999 WL 33633104 (C.D. Cal. Nov. 4, 1999) | 1 | A design patent claim must be construed to encompass the single inventive concept common to the multiple embodiments. | Claim Construction - Multiple Embodiments | |
| Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd., 525 F. Supp. 3d 1145, 1194 (S.D. Cal. 2021) | 3 | A secondary reference may only be used to modify a primary reference if the two references are related to a sufficient degree that the appearance of certain ornamental features in one design suggests application of those features to the other design. | Obviousness - Combining Secondary References | |
| Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998) | 2 | When identifying the ordinary observer for the infringement test, the focus is on the actual product that is presented for purchase, and the ordinary purchaser of that product. | Infringement - Identification of Ordinary Observer | |
| In re Butera, 1 F.3d 1252, 28 USPQ2d 1399, 1400 (Fed. Cir. 1993) | 9 | A prerequisite for using a prior art reference in an obviousness rejection is that the art be analogous. A prior art design is analogous to the type claimed if it has the same general use as that claimed in the design patent application | Obviousness - Analogous Prior Art | |
| In re Carlson, 983 F.2d 1032 (Fed. Cir. 1992) | 29 | A finding of obviousness is appropriate if the teachings of references suggest the overall appearance of the claimed design. If the combined teachings suggest only components of the claimed design but not its overall appearance, a rejection under section 103 is not appropriate. | Obviousness | |
| In re Chung, No. 00-1148, (Fed. Cir. Oct. 4, 2000) | 1 | In an obviousness analysis, certain features such as two small depressions or surface features such as texturing may be considered de minimis features. | Obviousness | |
| In re Klein, 987 F.2d 1569 (Fed. Cir. 1993) | 30 | Utility patents can be considered in design cases for all that they teach or imply. Any rejection of one embodiment over prior art will apply equally to all other embodiments. When an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. | Multiple Embodiments - Utility Patents - Priority | |
| Jore Corp. v. Kouvato, Inc., 117 F. App'x. 761 (Fed. Cir. 2005) | 22 | A primary reference does not need to be identical to the claim in order for a skilled designer to recognize its availability as a base reference, provided that the primary reference shares basic overall visual similarity with the claimed design. It can include differences that are readily noticeable yet still function as a primary reference. However, a primary reference is not basically the same where the reference needs a major modification to make it look like the claimed design. | Obviousness - Primary Reference | |
| Junker v. Medical Components, Inc., Civil Action N. 13-4606 (E.D. Pa., January 4, 2019) | 1 | The holding in In re Maatita can be applied to design patents containing multiple drawings. | Indefiniteness - Maatita and multiple drawings | |
| Kolcraft Enters. v. Graco Children's Products, No. IPR 2016-00810, 2016 WL 6650119 (PTAB Sept. 28, 2016) | 1 | The ultimate inquiry in an obviousness analysis is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. | Obviousness | |
| Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020) | 39 | High level and broad similarities in size, proportionality and relationship to each other and the whole do not satisfy the ordinary observer test. When one excludes the functional design elements from the scope of the design claim at the conceptual level, and places the ornamental aspects of the designs in context of the prior art, the differences between the patented and accused design take on greater significance. | infringement - Ordinary Observer Test | |
| Lawman Armor Corp. v. Winner Int'l LLC, 437 F.3d 1383 (Fed. Cir. 2006) | 2 | New designs often involve only relatively small changes in shape, size, placement, or color of elements of old designs. These differences are relevant both when assessing infringement and when assessing validity over prior art references in terms of both anticipation and obviousness. | Anticipation - Assessing Differences | |
| Mojave Desert Holdings, LLC v. Crocs, Inc., No. 2020-1167 (Fed. Cir. Feb. 18, 2021) | 17 | A section 102 anticipation rejection is improper where there are visual deficiencies in a prior art reference due to lack of a complete set of views. | Anticipation - Adequacy of views in prior art reference | |
| Pac. Coast Marine Windshields Ltd. v. Malibu Boats LLC, 739 F. 3d 694 (Fed. Cir. 2014) | 7 | Claim scope in a design patent is defined by drawings rather than by language. The doctrine of prosecution history estoppel applies to design patent applications. | Prosecution History Estoppel | |
| PHG Techs. LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) | 6 | When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose. | Ornamentality | |
| Raffel Systems, LLC v. Man Wah Holdings Limited, PGR2019-00029 (PTAB July 10, 2019), affirmed per curium on other grounds, 849 Fed. Appx. 929 (Fed. Cir. 2021) | 19 | A design is not basically the same as the claimed design if one finds several significant differences between the claimed designs. | Obviousness - Primary Reference | |
| Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524 (Fed. Cir. 2012) | 2 | When determining whether apparently minor differences between specific design features would be recognized as distinguishing the designs, it often helps to refer to prior art with which the ordinary observer would reasonably be familiar | Anticipation - Ordinary Observer Test | |
| Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373 (Fed. Cir. 2002) | 8 | “When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose." | Ornamentality | |
| Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314 (Fed. Cir. 2012) | 1 | When considering whether a reference can be a primary reference, rather than looking to the general concept of a design, the focus should be on the distinctive visual appearances of the reference and the claimed design. | Obviousness - Primary Reference | |
| Smith v. Whitman Saddle Co., 148 U.S. 674 (1893) | 7 | Under the ordinary observer standard, a patented design that consists of only bringing together old elements with slight modifications of form is not infringed by another who uses the same elements with his own variations of form if the design is distinguishable by the ordinary observer from the patented design. | Anticipation - Ordinary Observer Test | |
| Spigen Korea Co. v. Ultraproof, Inc., 955 F. 3d 1379 (Fed. Cir. 2020) | 31 | The question for design patents is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. The question of fact is whether a prior art reference qualifies as a primary reference, which is a single reference that creates basically the same visual impression as the claimed design. To be basically the same, the designs at issue cannot have substantial differences in their overall visual appearances. Additionally, if major modifications would be required to make a design look like the claimed design, then the two designs are not basically the same. | Obviousness - Primary Reference | |
| Sun Hill Indus. v. Easter Unlimited, Inc., 48 F.3d 1193 (Fed. Cir. 1995) | 2 | The commercial embodiment of patent claim (i.e. item that purchasers would see) is not to be used as the basis for comparison under the ordinary observer test. Color may play a role in the patentability of a claimed design | Anticipation - Commercial embodiments not compared under Ordinary Observer Test | |
| Sunbeam Prods. v. Wing Shing Prods. (BVI Ltd.), 665 F. Supp. 2d 357, 367 (S.D.N.Y. 2009), aff'd, 374 F. App'x 956 (Fed. Cir. 2010) | 12 | Where a particular design element, in view of the prior art, sharply distinguishes the claimed design from the accused design, it is not error to focus on that element in the infringement analysis. | Infringement | |
| Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., 836 Fed. Appx. 895 (Fed. Cir. 2020) | 1 | If the claimed and accused designs are found to be sufficiently distinct and plainly dissimilar at this stage, then there is no infringement, and the inquiry ends. | Infringement - Plainly Dissimilar | |
| Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) | 41 | The ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. | Obviousness | |
| Unique Functional Prods., Inc. v. Mastercraft Boat Co., Inc., 82 F. App'x 683 (Fed. Cir. Nov. 18, 2003) | 1 | Color may play a role in the patentability of a claimed design. | Patentability - Color | |
| Wallace v. Ideavillage Prods. Corp., 640 F. App'x 970 (Fed. Cir. 2016) | 1 | The ordinary observer test proceeds in two stages | Anticipation - Ordinary Observer Test | |
| Appeal No 239-48, 151 USPQ 711, 1966 C.D. 22, 833 O.G. 10 (Bd. App. 1965) | 0 | 1504.02 | Registration of a design abroad is considered equivalent to patenting for priority purposes under 35 U.S.C. 119(a)-(d) and for prior art purposes under pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. This means that if a foreign applicant has received protection in a foreign country, the U.S. application must be filed within six months of the foreign filing to claim priority, or it will be subject to a statutory bar. | Priority |
| Appeal, Decided 9/3/68, Ex parte, 866 O.G. 16 (Bd. App. 1968) | 0 | 1504.02 | For the purposes of determining priority and prior art under pre-AIA 35 U.S.C. 102(d), the registration of a design abroad is considered equivalent to patenting, regardless of whether the foreign grant is published. | Priority |
| Berkman, In re, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) | 0 | 1504.2 | Denies the benefit of a design patent application's filing date for a later utility application under 35 U.S.C. 120 because the design application did not satisfy the disclosure requirements of 35 U.S.C. 112 (MPEP § 1504.20) | Priority |
| Carman Indus. Inc. v. Wahl, 724 F.2d 932, 220 USPQ 481 (Fed. Cir. 1983) | 0 | 1504.06 | For double patenting to occur between a design and a utility patent, there must be a clear overlap in the claimed subject matter. | Double Patenting |
| Jaffe, Ex parte, 147 USPQ 45 (Bd. of App. 1964) | 0 | 1504 | Once prosecution on the merits is closed, amendments are treated similarly to amendments after final rejection, focusing on formal matters rather than substantive changes. Note: removed from latest version of MPEP. | Procedure - Amendments |
| John O. Butler Co. v. Block Drug Co. Inc., 620 F. Supp. 771, 226 USPQ 855 (D. Ill. 1985) | 0 | 1504 | “In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” Note: removed from latest version of the MPEP. | Functionality - Standard |
| Lancaster, Ex parte, 151 USPQ 713, 1966 C.D. 20, 833 O.G. 8 (Bd. App. 1965) | 0 | 1504.02 | “Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a)-(d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published.” | Priority - Foreign Registration |
| Lander, Ex parte, 223 USPQ 687 (Bd. App. 1983) | 0 | 1504.02 | An invention must be fully enabled by the specification as filed. This means the disclosure must be sufficient to enable a person skilled in the art to make and use the invention without undue experimentation. | Enablement - Standard |
| Lawrence, Ex parte, 70 USPQ 326 (Comm’r Pat. 1946) | 0 | 1509 | Establishes that the term of a design patent may not be extended by reissue (MPEP § 1509) | Reissue - Extension of Term |
| Marinissen, Ex parte, 155 USPQ 528, 842 O.G. 528 (Bd. App. 1966) | 0 | 1504.02 | The registration of a design abroad is considered equivalent to patenting in the United States for priority purposes under 35 U.S.C. 119(a)-(d) and for prior art purposes under pre-AIA 35 U.S.C. 102(d), regardless of whether the foreign grant is published. | Claim Scope - Characteristics Features Statement |
| Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321 (Fed. Cir. 1994) | 0 | 1504.02 | Establishes that experimentation directed to functional features of a product with an ornamental design may negate public use under pre-AIA 35 U.S.C. 102(b) (MPEP § 1504.02) | Experimental Use - Functional Features |
| Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 202 USPQ 559 (6th Cir. 1979) | 0 | 1504.06 | Double patenting exists if the feature in which the novel esthetic effect resides is the identical feature which produces the novel function so that a structure embodying the mechanical invention would of necessity embody the design, and vice versa | Double Patenting |
| Wahl v. Rexnord, Inc., 624 F.2d 1169, 206 USPQ 865 (3rd Cir. 1980) | 0 | 1504.06 | Double patenting can exist between a utility patent and a design patent if the feature that provides the novel aesthetic effect in the design patent is the same feature that produces the novel function in the utility patent, such that embodying one would necessarily embody the other. | Double Patenting - Utility Design |
| Alton, In re, 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996) | 1 | 1504.04 | “If a person of ordinary skill in the art would have understood the inventor to have been in possession of the claimed invention at the time of filing, ... then the written description requirement is met; Requires the examiner to fully respond to applicant's rebuttal arguments and analyze any declarations or affidavits when rejecting for lack of written description (MPEP § 1504.04) | Written Description |
| Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974) | 1 | 1504.06 | Establishes that consideration of possible double patenting rejections between utility and design applications cannot be based solely on the utility drawing disclosure (MPEP § 1504.06) | Double Patenting |
| Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) | 1 | 1504.03 | Notes that copying by competitors needs more than mere fact to be significant evidence of nonobviousness; other factors must be considered (MPEP § 1504.03) | Obviousness - Secondary Considerations |
| de Seversky, In re, 474 F.2d 671, 177 USPQ 144 (CCPA 1973) | 1 | 1504.2 | Clarifies that a statement of continuation or division does not constitute incorporation for satisfying 35 U.S.C. 112(a) disclosure requirements (MPEP § 1504.20) | Written Description - Incorporation |
| Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988) | 1 | 1504.01(c); 1504.03 | Visibility during normal use is not a statutory requirement for ornamentality but is used to determine if features are ornamental; once visibility is established, ornamentality must still be shown (MPEP § 1504.01(c); MPEP § 1504.03) | Ornamental - Standard |
| Wise, In re, 340 F.2d 982, 144 USPQ 354 (CCPA 1965) | 1 | 1504.01(d) | The broken or dotted line showing in design drawings is an immaterial part of the design as to specific shape or configuration; It only indicates the general article with which the dominant features of the design shown in full lines are associated. | Broken Lines - Significance Of |
| Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985) | 2 | 1504.03 | Reversible error to not consider prior patent in its entirety, i.e., as a whole, including portions that would lead away from the invention; patent system not foreclosed to those who make simple inventions; Submission of expert testimony must establish credentials and should not express an opinion on the ultimate legal issue of obviousness (MPEP § 1504.03) | Obviousness - Teaching Away |
| Appeal No. 315-40, Ex parte, 152 USPQ 71 (Bd. App. 1965) | 2,072 | 1504.05; 1504.06 | If multiple designs can be covered by a single claim, any rejection will apply equally to all; For nonstatutory double patenting, the conflicting design claims should have basically the same design characteristics (MPEP § 1504.05; MPEP § 1504.06) | Double Patenting |
| Zahn, In re, 617 F.2d 261, 204 USPQ 988 (CCPA 1980) | 2,162 | 1502; 1504.04; 1503.01; 1503.02 | States that 35 U.S.C. 171 refers to the design for an article, inclusive of all kinds of ornamental designs; assumes that the claim has been crafted to protect what the inventor regards as his invention; unclaimed subject matter may be shown in broken lines for illustrating environment (MPEP § 1502; MPEP § 1504.04; MPEP § 1503.01; MPEP § 1503.02) | Claiming - Portion Claiming Allowed |
| Carter, In re, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982) | 2,404 | 1504.03 | Reinforces that the level of ordinary skill for design patents is from the perspective of a designer of the specific article type (MPEP § 1504.03) | Obviousness - Ordinary Designer Standard |
| Glavas, In re, 230 F.2d 447, 109 USPQ 50 (CCPA 1956) | 2,449 | 1504.03 | Specifies how to determine analogous art for design patents, focusing on whether the appearance of ornamental features in one art would suggest their application to another; when modifying the surface of a primary reference, it is immaterial whether the secondary reference is from an analogous art (MPEP § 1504.03) | Obviousness - Analogous Art |
| Rosen, In re, 673 F.2d 388, 213 USPQ 347 (CCPA 1982) | 2,493 | 1504.03; 1503.01 | "To support a holding of obviousness there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design. Once a reference meets the test of a basic design, reference features may reasonably be interchanged with or added from those in other pertinent references; "Clarifies that the primary reference for obviousness should give the same visual impression and overall appearance as the claimed design; in determining patentability, it is the overall appearance of the claimed design which must be considered, not just specific features (MPEP § 1504.03; MPEP § 1503.01) (overruled by LKQ) | Obviousness - Procedure |
| Antle, In re, 444 F.2d 1168, 170 USPQ 285 (CCPA 1971) | 2,503 | 1504.03; 1504.06 | A designer skilled in the art is charged with knowledge of the related art, making combinations of old elements obvious within the level of ordinary skill; A designer skilled in the art is charged with knowledge of the related art for nonstatutory double patenting analysis (MPEP § 1504.03; MPEP § 1504.06) | Obviousness - Ordinary Designer Standard |
| Nalbandian, In re, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981) | 2,637 | 1504.03 | Defines the level of ordinary skill in the art for design patents as the perspective of a designer of the types of articles involved; advises that differences between the claimed design and a primary reference may be held minor in nature (MPEP § 1504.03) | Obviousness - Ordinary Designer Standard |
| Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 80 F.4th 1363, 1378 (Fed. Cir. 2023) | 3 | §1504.01(e) | For a prior-art design to anticipate, it must be applied to the type of article of manufacture identified in the claim. | Anticipation - Standard |
| Swett, In re, 451 F.2d 631, 172 USPQ 72 (CCPA 1971) | 3 | 1504.06 | States that a "same invention" type double patenting rejection cannot be overcome by a terminal disclaimer (MPEP § 1504.06) | Double Patenting - Same Invention |
| Zickendraht, In re, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) | 3 | 1504.06 | Explains that for nonstatutory double patenting, the conflicting design claims should have basically the same design characteristics (MPEP § 1504.06) | Double Patenting |
| Frick, In re, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) | 3,336 | §1504.02 | Design patentability depends on the nonobviousness of the overall appearance compared to prior art. | Obviousness - Standard Overall Appearance |
| Daniels, In re, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998) | 3,426 | 1504.04; 1503.02 | Concludes that an earlier application must show possession of the later-claimed design to be entitled to its filing date; provides guidance on evaluating written description by considering the perspective of an ordinary designer; an amendment canceling two-dimensional surface treatment or reducing it to broken lines is permitted if possession of the underlying design was clear at filing; the same applies to omitting color (MPEP § 1504.04; MPEP § 1503.02) | Written Description - Standard |
| Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) | 3,430 | 1504.03 | Just as “minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,” so too minor differences cannot prevent a finding of anticipation;" Discusses evaluating commercial success as evidence of nonobviousness, ensuring there's a nexus between sales and the design's ornamental features (MPEP § 1504.03) | Anticipation - Standard |
| Rasmussen, In re, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981) | 3,650 | 1504.04 | An amendment lacks support if the original disclosure does not convey possession of the amended subject matter (MPEP § 1504.04) | Written Description - Support for Amendments |
| Lamb, In re, 286 F.2d 610, 128 USPQ 539 (CCPA 1961) | 3,758 | 1504.03 | Notes that mere differences between a design and prior art are not sufficient to establish patentability under 35 U.S.C. 103 (MPEP § 1504.03) | Patentability - Standard |
| Bevan, Ex parte, 142 USPQ 284 (Bd. App. 1964) | 4 | 1503.02 | Any appeal must include corrections to the drawings approved by the examiner (MPEP § 1503.02) | Appeals |
| Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972) | 4 | 1512 | Supports the prohibition against using trademarks in a derogatory manner in design applications (MPEP § 1512) | Patentability - Trademarks |
| Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) | 4 | 1512 | Use of a trademark in a derogatory manner in a design application is prohibited, leading to a rejection under 35 U.S.C. 171 (MPEP § 1512) | Patentability - Trademarks |
| Livjo, Inc. v. Deckers Outdoor Corp., 2011 WL 12516430 (C.D. Cal. Sept. 27, 2011) | 4 | Differences in visual impression can be significant, especially in crowded design fields. | Infringement - Crowded Field | |
| Van Ornum, In re, 686 F.2d 937, 214 USPQ 761 (CCPA 1982) | 4,307 | 1504.06 | Explains that nonstatutory double patenting prevents multiple suits and prolongation of patent term by different assignees (MPEP § 1504.06) | Double Patenting |
| Platner, In re, 155 USPQ 222 (Comm’r Pat. 1967) | 4,362 | 1504.05 | Clarifies that embodiments patentably distinct from one another do not constitute a single inventive concept and cannot be included in the same application (MPEP § 1504.05) | Restriction - Embodiments |
| Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 59 USPQ2d 1472 (Fed. Cir. 2001) | 4,395 | 1504.02; 1504.04 | Provides guidance on the test for anticipation in design patents, relying on the ordinary observer test; supports that failure to show features in broken lines signals their inclusion in the claimed design (MPEP § 1504.02; MPEP § 1504.04) | Anticipation - Ordinary Observer Standard |
| Longi, In re, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985) | 4,401 | 1504.06 | Supports the notion that nonstatutory double patenting involves an "obviousness" analysis different from 35 U.S.C. 103 (MPEP § 1504.06) | Double Patenting |
| Vogel, In re, 422 F.2d 438, 164 USPQ 619 (CCPA 1970) | 4,468 | §1504.06 | Nonstatutory double patenting rejection applies where claims are not patentably distinct. | Double Patenting |
| Goodman, In re, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993) | 4,504 | 1504.04; 1504.06 | Provides that the patented ornamental design has no use other than its visual appearance; provides the basis for statutory double patenting rejection under 35 U.S.C. 171, preventing issuance of a second patent for the same design (MPEP § 1504.04; MPEP § 1504.06) | Double Patenting |
| Rubinfield, In re, 270 F.2d 391, 123 USPQ 210 (CCPA 1959) | 4,592 | 1504.05; 1504.06 | Establishes that multiple embodiments of a design may be protected by a single claim if they involve a single inventive concept; provides the basis for nonstatutory double patenting rejections (MPEP § 1504.05; MPEP § 1504.06) | Multiple Embodiments |
| Thorington, In re, 418 F.2d 528, 163 USPQ 644 (CCPA 1969) | 4,786 | 1504.06 | Establishes the judicial basis for a design-utility "same invention" double patenting rejection (MPEP § 1504.06) | Double Patenting - Same Invention Design Utility |
| Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986) | 5 | 1504.02 | Mere differences in functional considerations do not negate a finding of anticipation when determining the patentability of a design. Functional features cannot be relied upon to support the patentability of a design, and the design must be evaluated based on its ornamental aspects. | Patentability - Ornamental |
| Hanback, Ex parte, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986) | 5 | 1504.04 | Allows design patent applicants to amend drawings before final rejection but finds new matter if amendments go beyond mere clarification (MPEP § 1504.04) | Procedure - Amendments |
| Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002 (N.D. Cal. 1990) | 5 | 1504.01(c) | While ornamentality must be based on the entire design, when determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered; Indicates that evidence of primarily ornamental considerations in design decisions can establish ornamentality (MPEP § 1504.01(c)) | Functionality - Standard |
| Blum, In re, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) | 5,253 | 1503.01; 1503.02 | Broken lines are not permitted to indicate unimportant or immaterial features of the design; also, broken lines cannot be used to show hidden planes or surfaces (MPEP § 1503.01; MPEP § 1503.02) | Broken Lines |
| Quayle, Ex parte, 25 USPQ 74, 453 OG 213 (Comm'r Pat. 1935) | 5,592 | 1504 | Establishes the practice for handling formal matters in design applications when substantive issues are resolved, allowing for allowance pending formal corrections (MPEP § 1504) | Procedure - When Substantive Prosecution Closed |
| Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) | 5,690 | §1504.01(e) | A design patent is infringed if an ordinary observer finds two designs substantially the same, leading to confusion. | Infringement - Ordinary Observer Standard |
| LKQ Corp. v. GM (en banc), 102 F.4th 1280 (Fed. Cir. 2024) | 6 | In obviousness analysis, primary reference need not be basically the same as the claimed design. | Obviousness - Standard | |
| Sapp, In re, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963) | 6 | 1504.03 | Suggests that secondary references should be applied in a way that makes it clear the differences would be obvious to a designer of ordinary skill (MPEP § 1504.03) | Obviousness - Secondary References |
| International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 93 USPQ2d 1001 (Fed. Cir. 2009) | 6,509 | 1504.02 | The ordinary observer test is the sole test for anticipation. (MPEP § 1504.02) | Anticipation - Standard Ordinary Observer Test |
| Eclectic Prods., Inc. v. Painters Prod., Inc., No. 6:13-CV02181, 2015 WL 930045 (D. Or. Mar. 2, 2015) | 7 | Inconsistencies between visual disclosure and claim language may lead to inadequate disclosure. | Inconsistencies | |
| Jung, In re, 637 F.3d 1356, 98 USPQ2d 1174 (Fed. Cir. 2011) | 9 | 1504.01(c) | Requires a prima facie showing and evidentiary basis for rejecting a design claim based on lack of ornamentality (MPEP § 1504.01(c)) | Patentability - Ornamental |
| Munchkin, Inc. v. Luv N’ Care, Ltd., 110 USPQ2d 1580 (P.T.A.B. 2014) | 9 | 1504.04 | For the written description requirement to be satisfied, the specification must describe the claimed invention in sufficient detail that a person of ordinary skill in the art would recognize that the inventor had possession of the claimed subject matter at the time of filing. | Written Description - Standard |
| Hruby, In re, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) | 10 | 1504.01(a) | Confirms that a design's dependence on external elements does not preclude it from being considered a design for an article of manufacture (MPEP § 1504.01(a)) | Patentability - Article of Manufacture |
| Mazier v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954) | 10 | 1512 | Noted the election of protection doctrine but did not express any view on it since a design patent had been secured (MPEP § 1512) | Patentability - Election of Protection Doctrine |
| Antonious v. Spalding & Evenflo Cos., 217 F.3d 849, 1999 WL 777450 (Fed. Cir. 1999) | 11 | Errors and inconsistencies between drawings do not merit a § 112 rejection, however, if they "do not preclude the overall understanding of the drawing as a whole;” Perspective inconsistencies in drawings may not preclude understanding the overall design. | Inconsistencies - Standard | |
| Balmer, In re, 276 F.2d 405 (CCPA 1960) | 11 | Designs must be compared in their entireties; segmentation of features is improper. | Infringement - Overall Comparison | |
| Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 93 USPQ2d 1777 (Fed. Cir. 2010) | 11 | 1504.03 | When the differences between the claimed and the allegedly anticipating design are viewed in light of the prior art as a whole, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the applied reference, and if the claimed design is close to the prior art as a whole, small differences between the applied reference and the claimed design assume more importance to the eye of the hypothetical ordinary observer; Confirms that secondary considerations can be considered when evaluating prima facie obviousness; evidence can be presented at the time of the rejection or in rebuttal (MPEP § 1504.03) | Anticipation - Ordinary Observer Standard |
| Lohman, Ex parte, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912) | 11 | 1503.02 | A sectional view may be included to clarify the contour or configuration of an external surface if it does not illustrate internal construction (MPEP § 1503.02) | Drawings - Sectional Views |
| Abrams, In re, 98 USPQ 215, 676 O.G. 908 (1953) | 12 | Regrouping familiar forms or substituting slightly different forms does not merit design patentability. | Patentability - Obviousness | |
| Skechers U.S.A., Inc. v. Nike, Inc., IPR2016-00871, 2016 WL 7049406 (P.T.A.B. Sept. 29, 2016) | 12 | Disclaiming portions of a design by changing solid lines to dashed lines is permissible in certain cases. | Broken Lines - Solid to Broken | |
| Lobdell, In re, 1948 C.D. 447, 77 USPQ 377 | 13 | Rejected claims cannot be allowed solely because similar claims were allowed in other applications. | Patentability - Effect of Prior Allowed Patents | |
| Norco Products, Inc. v. Mecca Development, Inc., 617 F. Supp. 1079, 227 USPQ 724 (D. Conn. 1985) | 15 | 1504.01(c); 1504.04 | A primarily functional invention does not qualify for design patent protection; also discusses the visibility of design elements; notes that encasing a concealed design element in a transparent cover does not change visibility rules (MPEP § 1504.01(c); MPEP § 1504.04) | Patentability - Functional |
| OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997) | 15 | §1504.03 | Design patent analysis requires comparing the claimed design to prior art after claim construction, if needed. | Infringement - Functionality Standard |
| U.S.A. Dawgs, Inc. v. Crocs, Inc., No. 2019-004306 (P.T.A.B. Sept. 10, 2019) | 15 | Missing views in prior art references can create a gap precluding a finding of anticipation. | Anticipation - Prior Art Missing Views | |
| Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986) | 16 | 1504.01(c) | Emphasizes that in determining functionality, the purpose of each element of the design must be considered (MPEP § 1504.01(c)) | Functionality - Standard |
| Avia Group Int'l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988) | 18 | 1504.02; 1504.03 | To be patentable, a design must be "created for the purpose of ornamenting" the article in which it is embodied; Highlights the minimal evidentiary value of affidavits on commercial success without a nexus to the design's ornamental features; expert testimony should not opine on obviousness (MPEP § 1504.02; MPEP § 1504.03) | Patentability |
| McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980) | 18 | 1504.01(a); 1503.01 | Confirms that descriptive statements in design patents can narrow the scope of claims; a "characteristic features" statement can serve to limit the claim later (MPEP § 1504.01(a); MPEP § 1503.01) | Claim Scope - Characteristics Features Statement |
| Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876) | 20 | 1504.01(d) | A design that merely simulates an existing object or person is not considered original and therefore is not patentable. The arbitrary selection of a well-known form to be applied to various articles does not demonstrate the exercise of invention required for design patent protection. | Patentability - Simulation |
| Kelly, In re, 200 USPQ 560 (Comm’r Pat. 1978) | 20 | 1504.05 | Indicates that patentably distinct embodiments require separate claims, leading to restriction (MPEP § 1504.05) | Restriction - Separate Embodiments |
| Seiko Epson Corp. v. Nu-Kote Int’l Inc., In re, 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999) | 20 | 1504.01(c); 1504.03 | Clarifies that visibility during normal use isn't a statutory requirement but a guideline for assessing ornamentality; states evidence of distinctness from prior art and consumer recognition can show ornamentality (MPEP § 1504.01(c); MPEP § 1504.03) | Ornamentality - Visibility |
| Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997) | 21 | 1504.01(c) | A design is not patentable if it is dictated solely by functional considerations. A design patent protects only the ornamental aspects of a design, and features that are essential to the use or purpose of an article are considered functional and not protected; five factors to consider are [l] whether the protected design represents the best design; [2] whether alternative designs would adversely affect the utility of the specified article; [3] whether there are any concomitant utility patents; [4] whether the advertising touts particular features of the design as having specific utility; and [5] whether there are any elements in the design or an overall appearance clearly not dictated by function. | Functionality - Standard |
| Kroger, Ex Parte, 219 USPQ 370 (B.P.A.I. 1982) | 21 | Inventorship issues require evidence to support claims; mere statements without explanation are insufficient. | Inventorship | |
| Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 134 S.Ct. 2120 (2014) | 21 | §1504.02(c) | the claim of a design patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), "fail[s] to inform with reasonable certainty, those skilled in the art about the scope of the invention." | Indefinteness - Standard |
| Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021) | 22 | 1504.03 | Continues the principle that commercial success must be linked to the ornamental aspects of the design to be valid evidence of nonobviousness (MPEP § 1504.03) | Obviousness - Secondary Considerations |
| Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 5 USPQ2d 1625 (Fed. Cir. 1988) | 22 | 1504 | The proportions and shape of a design contribute to the overall visual effect and thus must be taken into consideration when assessing infringement or the validity of a design patent. This principle emphasizes that the overall appearance, including the proportions and shape, is critical in evaluating design patents. | Infringement - Standard |
| Schilling, In re, 164 USPQ 576 (CCPA 1970) | 23 | Patentability depends on the overall appearance of the design, not on isolated differences over prior art. | Patentability - Overall Appearance | |
| Webb, Ex Parte, 30 USPQ2d 1064, 1068 (B.P.A.I. 1993) | 25 | 1504.01(c) | Attorney arguments cannot substitute for evidence in proving the ornamentality of a design claim. | Ornamental - Attorney Arguments |
| Dembiczak, In re, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999) | 28 | 1504.06 | Requires a two-way distinctness determination for nonstatutory double patenting in design-utility situations (MPEP § 1504.06) | Double Patenting |
| Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961) | 31 | 1504.01; 1504.01(c) | Establishes that a design must be a definite, preconceived thing, not merely a result of functional or mechanical considerations; addresses the distinction between functionality and ornamentality (MPEP § 1504.01; MPEP § 1504.01(c)) | Patentability - Ornamental |
| Geneva Pharmaceuticals, 349 F.3d 1373, 68 USPQ2d 1865 (Fed Cir. 2003) | 31 | 1504.06 | Reiterates the difference in "obviousness" analysis between nonstatutory double patenting and 35 U.S.C. 103 (MPEP § 1504.06) | Double Patenting - Obviousness Standard |
| Kaslow, In re, 707 F.2d 1366 (Fed. Cir. 1983) | 31 | Written description requirement evaluates whether the disclosure reasonably conveys possession of the claimed subject matter. | Written Description | |
| Braat, In re, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991) | 33 | 1504.06 | Clarifies that the "obviousness" analysis for nonstatutory double patenting is similar to but not the same as under 35 U.S.C. 103 (MPEP § 1504.06) | Obviousness - Standard for Double Patenting |
| Schneller, In re, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) | 34 | 1504.06 | Highlights nonstatutory double patenting's role in preventing unjustified extension of patent rights (MPEP § 1504.06) | Double Patenting |
| Oetiker, In re, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) | 37 | 1504.01(a); 1504.01(c) | After an applicant responds to a rejection, patentability is assessed based on the preponderance of evidence considering all arguments and the entire record; requires a prima facie showing by the examiner before the burden shifts to the applicant to rebut the lack of ornamentality (MPEP § 1504.01(a); MPEP § 1504.01(c)) | Procedure - Patentability |
| Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996) | 38 | Written description must reasonably convey to skilled artisans that the inventor possessed the claimed subject matter. | Written Description - Standard | |
| Gibson, Ex parte, 20 USPQ 249 (Bd. App. 1933) | 40 | 1504.01(b) | Allows a design patent to encompass multiple articles or parts within a single article of manufacture (MPEP § 1504.01(b)) | Patentability - Multiple Articles |
| LKQ Corp. v. GM (panel), 2023 WL 330605 (Fed. Cir. Jan. 20, 2023) | 41 | Missing views of a prior art reference may preclude anticipation. | Obviousness - Standard | |
| Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., 127 USPQ2d 1615 (Fed. Cir. 2018) | 42 | §1504.01(e) | A claimed design may be infringed even if the accused article includes extra features. | Infringement |
| Gosteli, In re, 872 F.2d 1012, 10 USPQ2d 1614 (Fed. Cir. 1989) | 49 | Compliance with the written description requirement depends on whether the disclosure allows skilled artisans to recognize the invention. | Written Description - Standard | |
| Shoe Form Co. Inc. v. Irwin Corp., 71 USPQ 144 (1946) | 49 | Transparency or changes in material and/or substance alone do not result in patentably distinct designs; Transparent portions alone do not create patentable distinctions from opaque designs. | Patentability - Transparency and Material Changes | |
| Haruna, In re, 249 F.3d 1327, 58 USPQ2d 1517 (Fed. Cir. 2001) | 51 | 1504.03 | Explains that a prima facie case of obviousness can be rebutted if the art teaches away from the claimed invention (MPEP § 1504.03) | Obviousness - Teaching Away |
| Cho, In re, 813 F.2d 378, 1 USPQ2d 1662 (Fed. Cir. 1987) | 52 | §1504.03 | Obviousness requires that prior art suggests the overall appearance of the claimed design. | Obviousness - Standard |
| Ace Fastener Corp. v. U.S., 125 USPQ 143 (1960) | 54 | Transparency or material changes alone do not result in patentably distinct designs. | Patentability - Obviousness | |
| Mogen David Wine Corp., In re, 328 F.2d 925, 140 USPQ 575 (CCPA 1964) | 57 | 1512 | Held that the rights under patents and trademarks are separate and distinct, with no dependency between them (MPEP § 1512) | Trademarks - Distinct from Patents |
| Mogen David Wine Corp., In re, 372 F.2d 539, 152 USPQ 593 (CCPA 1967) | 57 | 1512 | Reaffirmed that patent rights and trademark rights are separate and distinct (MPEP § 1512) | Trademarks - Distinct from Patents |
| Cornwall, In re, 230 F.2d 457, 109 USPQ 57 (CCPA 1956) | 59 | 1504.02; 1504.03 | Clarifies that concealed elements in normal use cannot be relied upon for patentability (MPEP § 1504.02; MPEP § 1504.03) | Patentability - Concealed Elements |
| Zonenstein, In re, 36 CCPA 845, 1949 C.D. 131, 80 USPQ 522 (1949) | 61 | 1504.02 | Examiner may consider minor differences in line quality, alignment, and length as de minimis; "patentability of design cannot be predicated on size." | Drawings - Minor Differences De Minimus |
| Peters v. Active Mfg., 129 U.S. 530, 537 (1889) | 63 | "That which infringes, if later, would anticipate, if earlier." | Anticipation - Standard | |
| Andrews, Ex Parte, 1917 C.D. 13, 234 O.G. 373 | 64 | applicant allowed to say the design was for "an article of glassware substantially as shown and described" and required to disclose by an appropriate drawing the manner in which his design was applied; Designs must disclose the manner in which the design is applied to an article of manufacture. | Indefiniteness | |
| Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015) | 66 | 1504.02 | The ordinary observer test is used to determine design patent infringement. This test requires considering the design as a whole to determine if an ordinary observer, giving the attention usually given by a purchaser, would be deceived into thinking that the accused design is the same as the patented design. The overall visual impression of the designs must be compared, rather than focusing on individual elements in isolation. | Infringement - Ordinary Observer Test |
| Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d 1316, 118 USPQ2d 1607 (Fed. Cir. 2016) | 69 | 1504.02 | When applying the ordinary observer test, determine whether the deception is a result of the similarities in the overall design - not of similarities in ornamental features in isolation. | Infringement - Standard |
| L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993) | 70 | 1504.01(c); 1504.03 | Clarifies that for a design to be patentable, it must be primarily ornamental, and the overall appearance of the article determines this, not individual features; indicates evidence of primarily ornamental considerations in design decisions can establish ornamentality (MPEP § 1504.01(c); MPEP § 1504.03) | Patentability - Ornamental |
| Kahn, In re, 441 F.3d 977, 988 (Fed. Cir. 2006) | 71 | Obviousness rejections require articulated reasoning with a rational underpinning. | Obviousness - Standard | |
| Premier Gem Corp. v. Wing Yee Gems & Jewelry Ltd., IPR2016-00434, Paper 9 (PTAB July 5, 2016) | 76 | Selectively choosing design features from secondary references while ignoring others is improper. | Obviousness - Standard | |
| Garbo, In re, 287 F.2d 192, 129 USPQ 72 (CCPA 1961) | 81 | 1504.03 | Functional or structural characteristics cannot support design patentability; Elements concealed during normal use cannot be relied upon for patentability (MPEP § 1504.03) | Patentability - Functional |
| Yardley, In re, 493 F.2d 1389, 181 USPQ 331 (CCPA 1974) | 82 | 1504.03; 1512 | Emphasizes that similarity of appearance is the basic consideration in determining design patentability over prior art; establishes that there is an overlap between copyright and design patent statutes where an author/inventor can secure both protections without electing between them (MPEP § 1504.03; MPEP § 1512) | Copyright - Overlap with Design Patent |
| KeyStone Retaining Wall Systems Inc. v. Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993) | 84 | 1504.05 | Clarifies that a design claim covers the entire design as a whole and does not extend to individual parts or portions thereof (MPEP § 1504.05) | Patent Scope - Entire Design and not Parts |
| Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 115 USPQ2d 1880 (Fed. Cir. 2015) | 86 | 1504.02 | When assessing the validity of design patents, the focus should be on the overall visual impression of the design, and care must be taken not to invalidate a design patent based on functionality by viewing the design at too high a level of abstraction | Functionality - Standard |
| Packard, In re, 751 F.3d 1307, 1310 (Fed. Cir. 2014) | 86 | §1504.02(c) | Claims must not be ambiguous or unclear in describing the invention. | Written Description - Standard |
| Webb, In re, 916 F.2d 1553, 16 USPQ2d 1433 (Fed. Cir. 1990) | 89 | 1504.01(c) | A design is intended to be noticed during sale but hidden during use, this does not necessarily disqualify it for lack of ornamentality; establishes that a prima facie case of obviousness can be rebutted if the art teaches away (MPEP § 1504.01(c)) | Obviousness - Teaching Away |
| Tucker, Ex parte, 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901) | 90 | 1503.02 | Sectional views for showing internal construction or functional features are unnecessary and may lead to confusion (MPEP § 1503.02) | Drawings - Sectional Views |
| Burdick, Ex Parte, 190 C.D. 184, 970 O.G. 1373 (1901) | 91 | Variations and modifications not shown in drawings are not permitted in a design patent. | Written Description and Enablement | |
| Bartfeld, In re, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991) | 99 | 1504.02 | A terminal disclaimer cannot be used to overcome a provisional rejection under 35 U.S.C. 102(b) (MPEP § 1504.02) | Terminal Disclaimer |
| Cohn, In re, 80 F.2d 65, 66 (CCPA 1935) | 101 | §1504.02(c) | Color alone does not establish patentability for a design and transparency is considered to be a color. | Patentability - Color |
| Miyazaki, Ex Parte, 89 USPQ2d 1207 (B.P.A.I. 2008) | 105 | Claims amenable to multiple plausible interpretations are indefinite and unpatentable under 35 U.S.C. 112. | Indefiniteness - Standard | |
| SurgiSil, L.L.P., In re, 14 F.4th 1380, 2021 USPQ2d 1008 (Fed. Cir. 2021) | 106 | 1502 | For a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim; A design claim is limited to the article of manufacture identified in the claim and does not cover a design in the abstract (MPEP § 1502) | Anticipation - Article of Manufacture |
| Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961) | 115 | 1504.04; 1503.02 | States that the adequacy of the disclosure must be determined by reference to the scope asserted; the term "unornamented" should not be used for surfaces with clearly non-flat structure (MPEP § 1504.04; MPEP § 1503.02) | Written Description - Standard |
| Gold Seal Importers Inc. v. Morris White Fashions, Inc., 49 USPQ 607 (1941) | 121 | Duplication of a design does not constitute invention. | Obviousness - Duplication | |
| Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 62 USPQ2d 1065 (Fed. Cir. 2002) | 123 | 1504.04 | Defines the scope of a design claim by what is shown in full lines in the application drawings (MPEP § 1504.04) | Patent Scope - Drawings |
| Kohler, Ex parte, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905) | 129 | 1504.04; 1503.02 | Emphasizes that the drawing should illustrate the design as it will appear to purchasers and users; sectional views for showing internal construction or functional features are unnecessary (MPEP § 1504.04; MPEP § 1503.02) | Drawings - Sectional Views |
| Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 78 USPQ2d 1147 (Fed. Cir. 2006) | 130 | 1504.02 | The overall infringement test for design patents should not be converted into an element-by-element comparison. Instead, the focus should be on the overall appearance of the design as a whole, considering the design's overall visual impression rather than isolating individual ornamental features. | Infringement - Overall Appearance |
| Richardson v. Stanley Works, Inc., 597 F.3d 1288, 93 USPQ2d 1695 (Fed. Cir. 2010) | 133 | §1504.01(e) | Ordinary observer test examines similarities in overall design, not isolated ornamental features. | Infringement - Ordinary Observer Test |
| Salmon, In re, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983) | 149 | 1504.04; 1504.20 | Holds that changing the configuration of a design in an amendment introduces new matter; states that a design application filed as a "continuation-in-part" which changes the shape or configuration of a design is not entitled to the benefit of the earlier application's filing date (MPEP § 1504.04; MPEP § 1504.20) | New Matter - Priority Date |
| Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) | 164 | 1504.03; 1504.06 | Outlines the basic factual inquiries for evaluating obviousness, applicable to both utility and design patents; requires factual inquiries mandated under Graham to determine obviousness for nonstatutory double patenting (MPEP § 1504.03; MPEP § 1504.06) | Obviousness - Framework |
| Peet, In re, 101 USPQ 203 (CCPA 1954) | 164 | Minor adjustments like rounding corners are obvious design changes and not patentably distinct. | Obviousness -Expediencies | |
| Leslie, In re, 547 F.2d 116, 192 USPQ 427 (CCPA 1977) | 189 | 1504.03; 1503.01 | States that in assessing patentability under 35 U.S.C. 103, it's the overall appearance of the design that should be considered; emphasizes that the overall appearance of the design is crucial for patentability, not just specific features (MPEP § 1504.03; MPEP § 1503.01) | Obviousness - Standard |
| Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 165 USPQ 496 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972) | 192 | 1503.02 | Reinforces that inconsistencies among views should be resolved to avoid confusion about the design's appearance (MPEP § 1503.02) | Inconsistencies |
| Jennings, In re, 182 F.2d 207, 86 USPQ 68 (CCPA 1950) | 200 | 1504.03 | Stipulates that for obviousness determination, a design should be compared with something in existence, not a combination from prior art (MPEP § 1504.03) | Obviousness - Standard |
| Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 2019 USPQ2d 341902 (Fed. Cir. 2019) | 205 | 1502; 1503.01 | The title of the design must identify the article in which the design is embodied by the name generally known and used by the public, and may contribute to defining the scope of the claim; Design patents are granted only for a design applied to an article of manufacture, not a design per se; identifying the article of manufacture in the title serves to notify the public about the scope of protection afforded by the design patent (MPEP § 1502; MPEP § 1503.01) | Patent Scope - Title of Article of Manufacture |
| Heckman, Ex parte, 135 USPQ 229 (P.O. Super. Exam. 1960) | 206 | 1504.05 | Supports the requirement for restriction when embodiments are patentably distinct (MPEP § 1504.05) | Restriction Requirement |
| Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989) | 206 | 1504.04; 1504.20 | The best mode requirement of the first paragraph of 35 USC 112 is not applicable to design patents; Meeting the written description requirement for a design is a question of whether the earlier application's illustrations depict the claimed design; establishes that a design application can be considered a continuing application of an earlier utility application if the conditions of 35 U.S.C. 120 are met (MPEP § 1504.04; MPEP § 1504.20) | Written Description - Best Mode |
| Pappas, Ex parte, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) | 210 | 1504.04; 1503.01 | Phrases like "or similar article" in the claim make it indefinite; in the title are indefinite when referring to the subject matter of the design, not just the environment (MPEP § 1504.04; MPEP § 1503.01) | Title - Indefiniteness |
| Donoghue, Ex Parte, 26 U.S.P.Q.2d 1266 (B.P.A.I. 1992) | 212 | A design for a computer-generated icon per se is unpatentable unless embodied in a specific article of manufacture. | Patentability - GUI Article of Manufacture | |
| Tayama, Ex Parte, 24 USPQ2d 1614 (B.P.A.I. 1992) | 215 | §1504.01(a) | The issuance of a patent has no significant precedential value; Mere reference to possibly contrary decisions of an examiner in other applications, applications which do not even discuss the issue raised, are not helpful in an analysis. | Prior Patents- Precedential Value |
| MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 110 USPQ2d 1235 (Fed. Cir. 2014) | 223 | 1504.03 | Discusses the relevance of secondary considerations like commercial success and copying in evaluating the nonobviousness of a design claim (MPEP § 1504.03) | Obviousness - Secondary Considerations |
| Carletti, In re, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964) | 229 | 1504.01(c) | Defines ornamentality as something created for the purpose of ornamenting, not merely a byproduct of functional considerations (MPEP § 1504.01(c)) | Ornamental |
| Donaldson, Ex Parte, 26 USPQ2d 1250 (B.P.A.I. 1992) | 234 | Design for a computer-generated icon must be embodied in a specific article of manufacture to be patentable. | Patentability - GUI Article of Manufacture | |
| Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958) | 236 | 1504.03 | States that functional features or forms cannot be relied upon to support patentability in design claims (MPEP § 1504.03) | Patentability - Functionality |
| King Ventilating Co. v. St. James, 26 F.2d 357 (CA 8, 1928) | 243 | Dimensional changes do not add novelty; shape alterations like elongation/shortening are not inventive acts. | Obviousness - Expedients | |
| High Point Design v. Buyers Direct, Inc., 730 F.3d 1301, 108 USPQ2d 1536 (Fed. Cir. 2013) | 250 | §1504.03 | Primary references for design patents must create a visual impression that is basically the same as the claimed design as a whole. | Obviousness - Primary References |
| Iknayan, In re, 123 USPQ 129 (CCPA 1959) | 254 | §1504.02 | Patentability of design cannot rest solely on color alone. | Patentability - Color |
| Moore, In re, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971) | 256 | 1504.04 | Establishes that any analysis for compliance with 35 U.S.C. 112 should begin with determining the scope of protection sought by the claims; the fact that claim language may not be precise does not automatically render the claim indefinite (MPEP § 1504.04) | Indefiniteness - Standard |
| Corba, In re, 212 USPQ 825 (Comm’r Pat. 1981) | 277 | 1504.2 | States that unless the filing date of the earlier application is needed, the entitlement to benefit in a continuation-in-part application will not be considered by the examiner (MPEP § 1504.20) | Priority - Continuation in Part |
| Maatita, In re, 900 F.3d 1369, 127 USPQ2d 1640 (Fed. Cir. 2018) | 298 | 1504.04; 1503.02 | Clarifies that some designs can be enabled and definite with a single plan- or planar-view, dependent on whether the design can be adequately defined by such a view; a single plan- or planar-view may be sufficient to disclose the claimed design if the design can be understood in two dimensions (MPEP § 1504.04; MPEP § 1503.02) | Written Description and Enablemente |
| Sung Nam Cho, In re, 813 F.2d 378, 1 USPQ2d 1662 (Fed. Cir. 1987) | 299 | §1504.03 | A proper obviousness rejection based on a combination of references requires that the visual ornamental design features of the claimed design appear in the prior art in a manner which suggests the applications as used in the claimed design. | Obviousness - Standard |
| Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) | 300 | 1504.04 | The requirement for sufficiency of a written description is "whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date"; states that the prohibition on new matter does not negate the need for a written description (MPEP § 1504.04) | Written Description |
| Borden, In re, 90 F.3d 1570, 39 USPQ2d 1524 (Fed. Cir. 1996) | 311 | 1504.03 | Sets a standard for combining references under 35 U.S.C. 103, requiring some suggestion for modification (MPEP § 1504.03) | Obviousness - Combining Referecnes |
| Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) | 313 | §1504.03 | The obviousness inquiry is whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design. | Obviousness Standard |
| Sanford, Ex parte, 1914 C.D. 69, 204 O.G. 1346 (Comm’r Pat. 1914) | 320 | 1504.04; 1504.05 | Design patent protection does not extend to patentably distinct segregable parts of a design (MPEP § 1504.04; MPEP § 1504.05) | Infringement - Scope fo Protection |
| Spiegel, Ex parte, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919) | 320 | 1503.01 | Acknowledges that while not required, a description beyond the drawing can be incorporated at applicant's option (MPEP § 1503.01) | Written Description |
| Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991) | 324 | 1504.2 | Confirms that a utility application can rely on the benefit of the filing date of an earlier filed design application if conditions under 35 U.S.C. 120 are met (MPEP § 1504.20) | Priority - Design Utility |
| Cady, Ex parte, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916) | 330 | 1502; 1503.01 | Clarifies that in design patent applications, the subject matter claimed is the design embodied in or applied to an article of manufacture, not the article itself (MPEP § 1502; MPEP § 1503.01) | Patent Scope - Article of Manufacture |
| Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965) | 338 | 1504.05, 1504.06 | A design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents; The inventive concept of a design is not limited to its embodiment in a single specific article if the designs are not patentably distinct (MPEP § 1504.05) | Patent Scope - Segregable Parts |
| Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 88 USPQ2d 1658 (Fed. Cir. 2008) | 404 | §1504.01(e) | Eliminated the point of novelty test for design patent infringement; ordinary observer test includes prior art context. | Infringement - Standard |
| Berg, In re, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998) | 526 | A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). | Double Patenting | |
| Owens, In re, 710 F.3d 1362, 106 USPQ2d 1248 (Fed. Cir. 2013) | 542 | 1504.04; 1503.02 | The test for written description sufficiency is the same for design and utility patents; discusses evaluating written description from the perspective of an ordinary designer; when introducing a boundary line via amendment, it must comply with the written description requirement; unclaimed boundary lines should make explicit a boundary that already exists (MPEP § 1504.04; MPEP § 1503.02) | Written Description - New Matter |
| Salsbury, Ex parte, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938) | 552 | 1504.04 | A fully disclosed claim should disclose the configuration and complete appearance of the article in which the design is embodied, so fully, clearly and with such certainty as to enable those skilled in the art to make the article without being forced to resort to conjecture; Undisclosed surfaces not seen during sale or use need not be described in the specification (MPEP § 1504.04) | Written Description and Enablement |
| Mann, In re, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988) | 563 | 1504.02 | Holds that the experimental use exception typically does not apply to design patents under pre-AIA 35 U.S.C. 102(b) (MPEP § 1504.02) | Experimental Use Exception |
| Remington, Ex parte, 114 O.G. 761, 1905 C.D. 28 (Comm’r Pat. 1905) | 634 | 1503.01 | The design claim is limited to what is shown in the drawings; Disclaimers of portions of the claimed design shown in solid lines are not permitted in the specification of an issued patent but can be in the original application (MPEP § 1503.01) | Patent Scope - Disclaimers |
| Lapworth, In re, 451 F.2d 1094, 172 USPQ 129 (CCPA 1971) | 748 | §1504.03 | Overall appearance, not minor details, determines design patentability; superimposing designs can highlight distinctions. | Patentability - Standard |
| Stevens, In re, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949) | 766 | 1504.01(c) | Where the only substantial difference between a design and the prior art is one of obvious changes in proportioning, the design is not patentable; Discusses the rejection of designs not visible in normal use as potentially lacking in ornamentality (MPEP § 1504.01(c)) | Patentability - Changes in Proportions |
| Strijland, Ex parte, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) | 774 | 1504.01(a); 1504.02; 1504.04; 1503.01 | Displaying an image on a screen does not automatically satisfy the article of manufacture requirement; however, icons or GUIs on a display are considered integral to computer operation; rejects a claim where the title fails to specify a known article of manufacture, and the drawing does not inherently identify the article; states that amendments to the title must have antecedent basis in the original disclosure and may not introduce new matter (MPEP § 1504.01(a); MPEP § 1504.02; MPEP § 1504.04; MPEP § 1503.01) | Article of Manufacture - GUI |
| Schnell, In re, 46 F.2d 203, 8 USPQ 19 (CCPA 1931) | 795 | 1504.01 | When referring to the title of the article in the first figure description, the indefinite article -- a/an -- is required; The word 'an' in the expression "design for an article" cannot necessarily mean a singular and particular article, but must in many cases refer to a generic article ... "; Interprets the scope of designs patentable under 35 U.S.C. 171, including surface indicia, shape or configuration, or a combination thereof (MPEP § 1504.01) | Patentability - Three Forms |
| Harvey, In re, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993) | 883 | 1504.03; 1504.04 | Supports that design characteristics mean overall visual appearance for patentability analysis; explains that the patented ornamental design has no use other than its visual appearance (MPEP § 1504.03; MPEP § 1504.04) | Patentability - Overall Appearance |
| Hupp v. Siroflex of America, Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997) | 884 | 1504.02 | A design patent's scope is limited to what is shown in the drawings, and the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “must be identical in all material respects.” | Anticipation - Standard |
| Asano, Ex parte, 201 USPQ 315 (B.P.A.I. 1978) | 935 | 1503.02 | When inconsistencies are found among the views, the examiner should object and request the views be made consistent; Minor inconsistencies in drawings do not invalidate a design claim if the overall understanding is clear. (MPEP § 1503.02) | Inconsistencies |
| Freeman, In re, 23 App. D.C. 226 (App. D.C. 1904) | 983 | 1503.01 | Drawings serve as the best description of a design; minor changes do not justify multiple patents. | Patent Scope - Drawings |