Understanding Design Patent Obviousness Principles following LKQ v GM
Preliminary Draft for Comment
By: Robert G. Oake
Introduction
Criticizing the legal framework for determining obviousness in design patent law is popular sport. After all, it makes for an easy mark. Whether a design is obvious is inherently subjective and attempts at objectively are at best imperfect and at worst harmful. But despite the elusive challenge, courts continually try to discern principles that attempt to strike a proper balance between predictability and flexibility. The latest effort is the Federal Circuit’s en banc opinion in LKQ Corporation v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024). Broadly speaking, the holding in LKQ follows the general trend of the Federal Circuit to abandon rules that, over time, became too rigid to work effectively and that are arguably contrary to Supreme Court precedent.
The fundamental challenge in design patent obviousness law is to prevent patentability of obvious variations of existing designs while guarding against hindsight reasoning that would render most designs obvious. Since nearly all designs consist of design elements found in the prior art, if the mere existence of all elements in the prior art was the test for obviousness, then nearly all designs would be unpatentably obvious. To avoid this result, a general principle exists (confirmed in LKQ) that a claimed design must be compared against something in existence rather than something that can be brought into existence by cobbling together prior art design elements. But what exactly does that mean?
“Something in Existence” Primary Reference
Let’s start with the case from which the principle first arose, In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). In Jennings, the inventor applied for a design patent on a vacuum condenser, as illustrated in the two figures below.
The examiner rejected (and the Board affirmed) the claimed design as obvious over the following five patents (none of which were for a vacuum condenser):
The Court of Customs and Patent Appeals reversed, stating “it seems to have been held that by selecting features taken from five different patents, that is, one feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.” Id. at 69, 70. The Court held this was error and stated the rule “[i]n considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence – not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.” Id. at 70. (emphasis added).
The “Basically the Same” Requirement
The principle from Jennings was carried one step further in In re Rosen, 673 F.2d 388 (CCPA 1982), where the Court stated the design characteristics of the “something in existence” (i.e., primary reference) had to be “basically the same” as the claimed design. Id. at 391. In Rosen, explained in further detail below, the claimed design was for a coffee table with a transparent top supported by slots cut into three legs (below left). The primary reference was for a desk with a semi-circular top supported by V-shaped legs (below right).
The Court described the claimed design as making a visual impression of “lightness and suspension in space,” whereas the Rosen reference “embodies a concept of confinement in space.” Id. The Court concluded that Rosen could not serve as a primary reference because “[t]he modifications of Rosen necessary to achieve appellant’s table design would destroy fundamental characteristics of the Rosen design.” Id. Following Rosen, the courts began interpreting the phrase “basically the same” similar to “substantially the same” rather than similar in visual design characteristics. This analysis eventually was interpreted in LKQ to be overly restrictive and contrary to Supreme Court precedent. But following Rosen and prior to LKQ, if a “basically the same” primary reference did not exist, then the inquiry ended, and the design was not considered obvious.
Combining Secondary References
If a “basically the same” primary reference did exist, then secondary reference(s) could be added to supply the missing design elements if the secondary references “were so related to the primary reference such that features in one would suggest application of those features in the other.” In re Glavas, 230 F.2d 447, 450 (CCPA 1956). In other words, the mere similarity in appearance between the primary and secondary references provided the suggestion that one should apply certain features from one to the other. This “so related” test was, as a practical matter, a “proxy or replacement” for the analogous art requirement in utility patent law. See LKQ, at 1297. The analogous art requirement limited the ordinary designer’s scope of knowledge to analogous arts because the ordinary designer “could not possibly be aware of every teaching in every art.” LKQ at 1296 (citing and quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). In Glavas, “the court concluded that ‘[t]he principle of nonanalogous arts . . . cannot be applied to design cases in exactly the same manner as to mechanical cases,’ because design patent combinations rely on appearance rather than use.” LKQ at 1296 (citing and quoting Glavas at 450). Finally, Glavas required that the motivation or suggestion to combine come from the prior art references themselves. The overall legal framework created by Glavas was considered to provide effective protection against hindsight reasoning.
Problems with the Analysis
The pre-LKQ obviousness framework established by Jennings, Rosen, and Glavas had two major problems. First, it was contrary to the Supreme Court case of Smith v. Whitman Saddle, 148 U.S. 674 (1893), which did not contain a primary reference that was “basically the same” as the claimed design and where industry custom helped support the suggestion to combine references.
In Whitman Saddle, the claimed design was formed by combining the cantle (D in diagram above) of the prior art Jennifer saddle with the pommel (B) of the prior art Granger saddle. Although there was no primary reference that was basically the same as the claimed design, the Supreme Court did not agree with the lower court that the design was patentable. The Supreme Court stated “[n]othing more was done in this instance (except as hereafter noted) than to put the two halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done” and “we do not think that the addition of a known cantle to a known saddle, in view of the fact that such use of the cantle was common, in itself involved genius or invention, or produced a patentable design.” Id. at 681.
Note that in Whitman Saddle, the industry custom (led by functional considerations of how the two saddle halves had to be joined together) supplied not only the two major design elements but also the manner in which the two design elements had to be joined together.
The second problem with the pre-LKQ obviousness analysis is that it was too restrictive and contrary to the flexibility mandated by KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, which involved a utility patent claim, the Supreme Court held that the Federal Circuit’s “teaching, suggestion, or motivation” (TSM) test was too rigid and inconsistent with the expansive and flexible approach to obviousness set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). The Court explained that “a person of ordinary skill in the art could find a motivation to combine prior art references in ways other than meeting the TSM test as rigidly applied,” “for example, that design incentives and market forces could be a reason to apply an invention from one field into another….” Id. at 1292.
LKQ changes the Analysis
LKQ changed the design obviousness test primarily in two ways. Each made the test for obviousness more flexible. First, LKQ eliminated the requirement that the primary reference be “basically the same” as the claimed design. Second, LKQ eliminated the requirement that the suggestion or motivation to combine the secondary references with the primary reference come from the similarity in appearance of the references themselves.
Obviousness Principles Retained by LKQ
LKQ also expressly retained and emphasized other existing obviousness principles. First, LKQ reaffirmed that the analysis proceeds within the four-part framework established by Graham, supra, with the four factors being (1) determine the scope and content of prior art, (2) analyze the differences between the prior art and claimed design, (3) determine the level of ordinary skill in the particular art, and (4) apply secondary considerations, if any, including commercial success, industry praise, and copying (the potential application of long felt but unsolved need and failure of others was left to future cases to sort out). Note that secondary considerations (as distinguished to secondary references) are not discussed further here but will be the subject of another article.
Second, LKQ reaffirmed that when determining the scope and content of the prior art (step one), the art must come from analogous art. The Court did not attempt to define the full scope of the analogous art test, but stated that in the design patent context, analogous prior art includes art from the same field of endeavor as the article of manufacture of the claimed design. The Court acknowledged that the second part of the utility patent analogous art test (whether the reference is pertinent to the particular problem with which the inventor is involved), did not adapt well to designs, and left further development of the analogous art test to future cases. The Court stated that the analogous art requirement was intended to defend against hindsight reasoning.
Third, LKQ reaffirmed that when determining the scope and content of the prior art (step one), a primary reference still must be identified. Although the primary reference was no longer required to be “basically the same” as the claimed design, it usually was the closest prior art. The primary reference requirement also was intended to guard against hindsight reasoning by requiring that there be “something in existence—not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” Jennings, supra, at 208.
Fourth, LKQ reaffirmed 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. As will be explained below, the “as a whole” principle arguably is a more effective guard against hindsight reasoning than the analogous art requirement.
Motivation to Combine References under LKQ
The rule both before and after LKQ was that when a primary reference is insufficient by itself to render a claimed design invalid as obvious, secondary references may be considered. Following LKQ, the primary and secondary references did not need to be so related such that features in one would suggest application of those features in the other, but they had to both be analogous art to the patented design. Further, the motivation to combine these references did not need to come from the references themselves, but there had to be some “record-supported reason (without hindsight)” that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design. LKQ at 1299.
In LKQ, the Court provided a non-exclusive list of factors to consider regarding motivation to combine including (1) what market demands and industry customs exist in the relevant field, (2) an ordinarily skilled designer’s experience and creativity, and (3) ornamental features that are commonplace in the relevant field. Id. at 1299, 1300. Other factors, such as (4) an express or implied statement of a suggestion to combine in the prior art and (5) similarity in overall appearance of the primary and secondary references, existed prior to LKQ. These traditional factors were not eliminated by LKQ, but were held not to be required.
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).
Record-Supported Reason (Without Hindsight)
What does it mean to have “some record-supported reason (without hindsight)” for the motivation to combine references? For factors (1), (2), (3), and (5), the answer appears to be relatively straightforward because the evidence relevant to these factors typically consists of, or is supported by, documentation. However, it is less clear what it means in relation to factor (4), which is “an ordinarily skilled designer’s experience and creativity.” Fortunately, the Federal Circuit has stated that the invocation of “ordinary creativity” is no different from the reference to “common sense,” and there is a substantial amount of case law discussing how to deal with the invocation of “common sense” in an obviousness analysis. See DSS Tech. Mgmt. v. Apple Inc., 885 F.3d 1367, 1374 (Fed. Cir. 2018).
In DSS Tech, which involved a utility patent, the PTAB found a motivation to combine references based on the “ordinary creativity” of the skilled artisan and noted that “as the [Supreme] Court explained in KSR, the skilled artisan is ‘a person of ordinary creativity, not an automaton.'” Id. at 1373 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). The Federal Circuit reversed, holding that the Board’s decision failed to provide sufficient explanation for its obviousness finding. The court explained that “[t]he Board’s invocation of ‘ordinary creativity’ is no different from the reference to ‘common sense’ that we considered in Arendi [S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016)]”. Id. at 1374. The court concluded that mere reference to “ordinary creativity” of the skilled artisan, without “a reasoned explanation that avoids conclusory generalizations,” was not enough to satisfy the Arendi standard. Id. at 1377.
In Arendi, the court stated that common sense and common knowledge had a place in the obviousness analysis if they were explained with sufficient reasoning. The court noted the following three caveats: “First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.” Id. at 1361 (emphasis in original); “Second, the court has invoked common sense to fill in a missing limitation only when “the limitation in question was unusually simple and the technology particularly straightforward.” Id. at 1362. (emphasis in original). “Third, [the court’s] cases repeatedly warn that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Id. In short, “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
Principles Used to Affirmatively Argue that a Design is not Obvious
Prior to LKQ, a number of principles existed that were used to affirmatively argue that a claimed design is not obvious. Principles such as these typically exist in law to make any legal analysis more balanced and complete. In the design patent context, such principles allow an applicant the opportunity to affirmatively rebut a prima facie case of obviousness, and not just to argue that a prima facie case does not exist in terms of, e.g., lack of analogous prior art references and the absence of a motivation to combine. These principles were not expressly mentioned in LKQ, and it appears that most, if not all, remain viable after LKQ.
First Principle – Teaching Away
The first principle arises from the general rule that the claimed design and prior art references must be considered as a whole, which is a rule affirmed in LKQ. The “as a whole” requirement necessarily includes the principle that portions or design elements that “teach away” from a claimed design must be considered as well. A reference may be said to teach away when a person of ordinary skill, upon viewing the reference would be led in a direction divergent from the path that was taken by the applicant. The teaching away may result from functional considerations or from aesthetic considerations. This principle is consistent with the “as a whole” rule and the statement in LKQ that “the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.” The MPEP includes the “teach away” principle in the section entitled “Rebuttal of the Prima Facie Case.” See MPEP 1504.03 (III).
A case example of teaching away due to functional considerations is In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001). In Haruna, the claimed design featured a pre-recorded disk where the metallized region stopped well short of the outer rim, which created a wide transparent outer region.
The examiner issued an obviousness rejection based on U.S. Patent No. 4,747,093 (Benne) that describes disks with outer zones that use various surface treatments to conceal defects.
The Board upheld the rejection, reasoning that the claimed design’s transparent outer region did not impart patentability because a change in color alone (including transparency) did not confer patentable novelty (citing In re Cohn, 80 F.2d 65 (CCPA 1935) and In re Iknayan, 274 F.2d 943 (CCPA 1960)). The Board concluded the transparent region in Haruna’s design did not differ sufficiently from the non-transparent outer region in Benne’s prior art design.
The Court reversed the Board’s decision and determined that Benne’s teachings, which emphasize concealing defects in the outer zone with various treatments, discouraged and taught away from creating a design with a wide transparent outer region. The Court explained that Benne achieves its objective by treating the surface of the outer zone to provide a matte finish, colored surface, pattern, or combination thereof. The Court held that this teaching away from transparency by Benne rendered Haruna’s design non-obvious.
A case example of teaching away due to aesthetic considerations is Ex Parte Troutman, No. 2009-005005 (BPAI September 23, 2009). In Troutman, the claimed design was exposed legs for a play yard:
The examiner rejected the claimed design as obvious over three prior art references, one design patent (Celetina-Krevh USD448,218) and two utility patents (Tigrett US3,162,865 and Gottlieb US3,187,352). The Board reversed.
The Board found that in the Celetina-Krevh patented design, “the curved legs of the play yard have what appear to be lengths of fabric wrapped around the legs to cover the legs, the fabric being attached to the walls (also apparently fabric) of the enclosure of the play yard.”
The examiner argued that the shape of the legs was disclosed by Celetina-Krevh and that Tigrett and Gottlieb taught that the legs could be fully exposed. The Board disagreed, holding that that since the legs were covered by fabric in Celetina-Krevh, this patent actually taught away from exposed legs and could not be used as a prior art reference to render the claimed design obvious.
Comment: In this case the teaching away prevented the Celetina-Krevh patent from being a primary reference. It taught away from the Examiner’s proposed modifications.
A case example where the prior art did not teach away from a combination and instead supported a finding of obviousness is In re Borden, 90 F.3d 1570 (Fed. Cir. 1996). In Borden, the patent application claimed an “Ornamental Design for a Twin Neck Dispensing Container.” The design featured an oval-shaped main chamber with a cylindrical spout extending upward from one end, a cubical measuring chamber suspended by a thin laminate above the other end of the main chamber, and a filling tube extending along the spine of the container and connecting the main chamber to the measuring chamber.
The examiner relied on three prior art references to find the claimed design obvious. A twin neck container on the cover of a brochure (Bettix container), a container in the same brochure (Freshn Ice Tea container), and U.S. Design Patent No. 292,268 to Costa, each shown below.
The Bettix container is similar to the claimed design in that it features an oval-shaped main chamber with a cylindrical spout, a small measuring chamber suspended by a thin laminate above the main chamber and adjacent to the cylindrical spout, and a filling tube running along the spine of the container and connecting the two chambers.
The only difference between the Bettix container and the claimed design is the shape of the small chamber. The small chamber of the Bettix container flares outward near the top and the small chamber of the claimed design has straight sides. The small chamber of the Bettix container is rectangular and is narrower than the main chamber, whereas the small chamber in the claimed design is cubical and is as wide as the main chamber at its widest point.
The two secondary references supplied the design features missing from the Bettix design. The small cubicle chamber in the Freshn Ice Tea design has straight sides and the small chamber in D292,268 to Costa is as wide as the main chamber.
The Board of Patent Appeals and Interferences affirmed the obviousness rejection. The Federal Circuit also affirmed, finding that the Bettix reference was basically the same as the claimed design and that the design features in the secondary references “suggested to a designer of ordinary skill in the art that the small chamber of the Bettix container could be modified by making its sides straight and making it as wide as the main chamber at its widest point.” 90 F.3d at 1575.
The Court found a suggestion to combine existed because “[l]ike the Bettix container, the Freshn Tea and Costa containers are dual-chamber designs” and “[a]ll three have a small chamber in an upper corner of the container.” The Court stated further that “[i]n fact, the Freshn Tea container is listed in the Bettix container brochure as an example of the type of dual-chamber container the manufacturer could create for its customers; the brochure also lists other examples of custom variations, including ‘neck changes’ and changes in the ‘size of the chamber,’ precisely the types of variations on the Bettix design that are embodied in the Borden container.” Id.
Borden argued on appeal that the overall appearances of the Freshn Ice Tea and Costa containers are sufficiently different from the Bettix container that a suggestion to combine did not exist. The Court responded that a suggestion to combine existed because “the two missing design elements are not taken from unrelated references, but are found in other dual-chamber containers.” Id. The Court responded further that the secondary references did not merely provide a general approach to creating a new design, but rather “taught the two specific design elements that would convert the Bettix reference into appellant’s claimed design, and did so in a setting that would suggest the combination to one of skill in the art.” Id. at 1576.
Presumably, the suggestion “setting” was the close similarity in overall appearance of all three designs and the express reference in the brochure to potential custom variations including “neck changes” and changes in the “size of the chamber.”
Prosecution examples exist where the Patent Office did not apply the “teach away” principle to secondary references containing additional design features not relied upon for teaching. In App. No. 29/715,518, the applicant suggested that the presence of features not relied upon for teaching in the secondary references meant that the references “teach away” from the combination proposed in the rejection. The examiner responded “[t]his is not what it means to ‘teach away’,” and explained “[i]t is well-established that secondary references may be relied on to teach only “certain features” as a basic principle of the Rosen/Glavas framework that guides design obviousness analysis. The examiner continued “[a] ‘teaching away’ from a proposed modification requires instead some evidence that a reference criticizes, discredits or otherwise discourages the proposed modification. [citing] In re Fulton, 391 F.3d I 195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994).” The obviousness rejection was maintained since the applicant “identified no evidence in the secondary references that would suggest their individual disclosures discourage the specific incorporation of the teachings as applied.” To overcome the rejection, the applicant had to add design features by converting broken lines to solid lines.
Another example is App. No. 29/616,012, where the examiner stated “the mere existence of additional features that are not relied on in a secondary reference is not an indicator that the reference “teaches away” from the prescribed combination.” The examiner cited In re Borden, stating “[in] Borden for example, the two secondary reference container designs were successfully applied to the primary reference design in order to teach a small cubical chamber with straight sides, and a smaller chamber with the same width as the main chamber at its widest point, despite both secondary references also showing other features that differed from the primary reference, but that were not selected for teaching.” DPP 124 (Nov. 30, 2021).
Of course, in Borden the Court found a suggestion to combine existed because all the prior art references were dual-chamber designs and all had a small chamber in an upper corner of the container. Further, one secondary reference was listed in another prior art reference brochure as an example of the type of dual-chamber container the manufacturer could create for its customers. The brochure also listed other examples of custom variations, including neck changes and changes in the size of the chamber that were precisely the types of variations on the primary reference design that was embodied in the Borden claimed container. Given these similarities, the differences in the references were insufficient to constitute teaching away. If the similarities did not exist, a strong argument would exist that the differences would teach away.
Second Principle – Proposed Combination Destroys the Fundamental Characteristics of the Primary Reference
A second principle is if the proposed combination of the references destroys the fundamental characteristics of the primary reference, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. See In re Rosen, 673 F.2d 388 (CCPA 1982). In Rosen, the claimed design was for a low (coffee) table with a circular transparent top supported by means of slots cut into three V- or L-shaped reflective legs:
The examiner rejected the claimed design as being obvious over primary reference Rosen, in light of secondary references Klein, Hysten, and Mudde. As shown below, Rosen is a desk with a semi-circular top supported by V-shaped legs, Klein is a display stand with V-shaped legs having slots to support the triangular portions, and Hysten and Mudde are tables with circular glass or round tabletops.
The examiner held it obvious to join the three Rosen legs, equally spaced as in Mudde, to the circular top of Hysten by use of a slot as taught by Klein. The Board affirmed the rejection stating one of ordinary skill in the art would “readily observe that three equally spaced slotted V-shaped legs may be used to support a table top or shelf which is inserted in the slots of the legs” and “[t]o make such a shelf or top circular and of glass instead of opaque and triangular shaped would also appear to us to have been obvious to such a person armed with the disclosures of the applied prior art patents.” Id. at 390.
The Court reversed the finding of obviousness and cited the following principles: (1) the overall appearance of the claimed design must be taken into consideration; (2) by an ordinary designer; (3) and compared with something in existence (a primary reference), and not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature; (4) the primary reference must have design characteristics that are basically the same as the claimed design; (5) the primary reference must be similar enough in concept to the claimed design such that features might reasonably be interchanged with or added from secondary references to achieve the claimed design without destroying the fundamental characteristics of the primary design.
The Court explained that a designer of ordinary skill would find the claimed design and the Rosen reference significantly different because Rosen does not give “the same visual impression of lightness and suspension in space” conveyed by the claimed design. Id. at 391. On the contrary, Rosen “embodies a concept of confinement of space, resulting in a different overall appearance and aesthetic appeal.” Id. The Court concluded that, even assuming all the cited prior art could be considered, Rosen could not serve as a primary reference because “[t]he modifications of Rosen necessary to achieve appellant’s table design would destroy fundamental characteristics of the Rosen design.” Id. It therefore was not necessary for the Court “to reach the question of whether modifications of the Rosen desk are suggested by the cited art.”
Note that according to the MPEP, it is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.
Note further that LKQ eliminated the requirement from Rosen that the primary reference be “basically the same” as the claimed design. It remains to be seen whether LKQ also eliminated the principle that a reference cannot serve as a primary reference if modifications necessary to achieve the claimed design would destroy fundamental characteristics of the putative primary reference.
Third Principle – Focus on Design Characteristics and Not Design Concepts
A third principle is that the prior art references must be considered for their specific design characteristics as a whole, and not merely for their design concepts.
A case example of this is In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993). In Harvey, two design patent applications were filed (App. Nos. 172,904 (‘904) and 172,906 (‘906)) for vases featuring designs formed by the intersection of two geometric solids. The ‘904 design (below left) depicts a vase formed by the intersection of an “oblate ellipsoid with a pentagonal cylinder.” The ‘906 design (below right) depicts a vase formed by intersecting an “egg-shaped revolved hyperboloid with a truncated pyramid (also referred to as a square frustrum).”
The examiner rejected the ‘904 claimed design based on a prior art Harvey vase design formed by the intersection of a sphere with a cube as shown below left, and a Carder shape bowl that when rotated about its central axis forms an oblate ellipsoid, as shown in cross section below right.
The examiner reasoned that the claimed design differed from the two prior art references only in the specific pair of geometric solids used, i.e., ellipsoid versus sphere and pentagonal cylinder versus cube, and the substitution of one common geometric solid for another would have been per se obvious to one of ordinary skill in the vase design art.
The examiner rejected the ‘906 design as an obvious modification of the same prior art Harvey vase design (below left) in view of the Carder 2794 Design (below right).
The examiner reasoned that the Carder shape 2794 was substantially identical to the shape of the ‘906 design, except for the upper lip, and that a truncated pyramid was an obvious variation of a cube.
The Board affirmed both obviousness rejections, reasoning that the Harvey vase qualified as a “basic design” because it was an intersection of a rotational solid with a linear solid, and the substitution of shapes was a routine matter in the vase or container art.
The Federal Circuit reversed, finding first that the Harvey vase was not a basic reference because major modifications would be needed to make the Harvey prior art vase look like the claimed designs. The Court held the Board erred because it relied upon the prior art Harvey vase as a “design concept” of two intersecting solids rather than for its specific design characteristics.
The Court also held the Board erred because there was no suggestion in the prior art to combine the references and their visual design characteristics. Specifically, the Board erred because it improperly compared the visual impressions of selected, separate features of the prior art designs to the ‘904 and ‘906 designs, rather than the visual impression of the designs as a whole as required by In re Jennings, 182 F.2d 207, 208 (CCPA 1950).
The Court also held that even if there was a suggestion to combine references, it would still be necessary to make several significant changes in the cited prior art designs in order to achieve each of the claimed designs. For example, in the ‘904 application the material modifications include: (1) creating discontinuities at the top and bottom of the Carder 1982 shape to create an ellipsoid element and to provide for a top and bottom (the top of the claimed vase is not flat like the 1982 shape), and (2) changing the cube of the prior Harvey vase to a pentagonal cylinder. Regarding the ‘906 application, it would be necessary to: (1) eliminate the lip from the Carder 2794 vase, (2) change the shape of the 2794 vase by making it more egg-shaped rather than ginger-jar-shaped, and (3) change the cube of the prior Harvey vase to a truncated pyramid.
The Court also stated that in In re Carter, 673 F.2d 1378, 1380 (CCPA 1982), the court implied that if prior art designs are to be modified in more than one respect to render a claimed design obvious, then those modifications must be “de minimis” in nature and unrelated to the overall aesthetic appearance of the design.
Fourth Principle – Proposed Combination Fails to Teach Every Element of Claimed Design
A fourth principle is when the combination fails to teach every element of the claimed design, the claimed design is not obvious. 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). Note that under LKQ, the teachings need not come from the designs themselves. This principle is applicable in both the anticipation context (e.g., App. Nos. 29/646,779 DPP 15 (Nov. 23, 2021), 29/769,991 DPP 42 (Mar 26, 2024)) and the obviousness context (e.g., 29/621,195 DPP 13 (May 4, 2021), 29/711,569 DPP 11 (May 18, 2021). It remains to be seen whether and to what extent factors such as an ordinarily skilled designer’s experience and creativity can supply a missing design element considered significant enough to affect the overall visual impression of the design.
Fifth Principle – State of the Prior Art as Crowded or Uncrowded and Complexity of the Design
Before LKQ, the determination of whether a primary reference was basically the same as the claimed design included consideration of how crowded the prior art was and how complex the claimed design was. See In re Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993) (Prior case involving a speaker design distinguished based on the field of speaker prior art being less crowded and the speaker design being simple). 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). In general, when a design is simple and the art is crowded, a designer of ordinary skill may perceive a relatively small detail as creating a different overall visual impression. When a design is complex and the art is crowded, a designer of ordinary skill still may perceive a relatively small detail as creating a different overall visual impression. However, when a design is complex and the art is not crowded, the ordinary designer may not be able to perceive a relatively small detail as creating a different overall visual impression.
Is this principle still viable after LKQ? Although a “basically the same” primary reference is no longer required, it is still necessary to find a primary reference that when considered alone or combined with other references or record supported reasons, teaches every element of the claimed design that has an impact on the design as a whole. Therefore, whether a particular design feature is considered to be a significant or insignificant (de minimis) factor in influencing a design’s overall appearance may still be affected by how crowded the prior art is and how complex the design is. In a crowded field of prior art, an ordinary designer may consider even small design details as affecting the overall appearance, whereas in a less crowded field of prior art, smaller design details may have less of an impact on the overall appearance of the designs. Consequently, even though there may be more analogous designs and design components to draw from in a field of crowded prior art, it may be harder to show that the combination of references teaches every element of the claimed design when considered as a whole.
In Whitman Saddle, the saddle prior art contained “several hundred styles of saddles or saddle-trees” and therefore was very crowded. The design was relatively simple. The one design element identified by the Court that “seem[ed] to constitute what was new and to be material” was a “sharp drop of the pommel at the rear.” Id. at 682. The Court stated “[i]f therefore, this drop were material to the design, and rendered it patentable as a complete and integral whole, there was no infringement.” Id. The Court concluded “[m]oreover, that difference was so marked that in our judgment the defendants’ saddle could not be mistaken for the saddle of the complainant.” Id. The latter statement concerning infringement is consistent with the observation in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) that “[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.” Id. at 678. The former statement concerning patentability is hypothetical (If the drop was material to the design). Since it was not necessary to determine whether the sharp pommel drop was material to patentability (patentability was not at issue in the case), it was not necessary to discuss the effect of the crowded art and simplicity of the design on patentability.
Statement of Potential Obviousness Principles
When determining whether a design is obvious, the fact finder first should consider the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design. The scope of the prior art is not the universe of abstract design and artistic creativity, but rather designs of the same article of manufacture or of articles of manufacture sufficiently similar that a person of ordinary skill would look to such articles for their designs.
In determining the scope of the prior art, there is no threshold similarity or “basically the same” requirement to qualify as prior art. Rather, a prior art reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design and of articles of manufacture sufficiently similar that a person of ordinary skill would look to such articles for their designs.
The prior art must be considered in its entirety, including portions or design elements that teach away from a claimed design. A reference may be said to teach away when a person of ordinary skill, upon viewing the reference would be led in a direction divergent from the path that was taken by the applicant. The teaching away may result from functional considerations or from aesthetic considerations.
When determining the scope and content of the prior art, a primary reference must be identified. This primary reference need not be basically the same as the claimed design. Rather, the primary reference need only be something in existence and not something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.
The primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design. The more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove obviousness. The primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.
It is often the case that the primary reference alone does not render the claimed design obvious, and design elements from secondary prior art references may be considered as discussed below.
After considering the scope and content of the prior art, a determination must be made regarding the differences between the prior art designs and the design claim at issue. When determining the differences between the claimed design and prior art designs, the visual appearance of the claimed design is compared with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture.
After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of the prior art, and the differences between the prior art and the claimed design, the obviousness or nonobviousness of the claimed design is evaluated.
A design is obvious when an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the primary prior art design to create the same overall visual appearance as the claimed design. The inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.
Where a primary reference alone does not render the claimed design obvious, secondary references may be considered. The primary and secondary references need not be so related such that features in one would suggest application of those features in the other but they must both be analogous art to the patented design. Further, the motivation to combine these references need not come from the references themselves, but there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.
A non-exclusive list of factors to consider regarding motivation to combine include (1) an express or implied statement of a suggestion to combine in the prior art, (2) similarity in overall appearance of the primary and secondary references, (3) what market demands and industry customs exist in the relevant field, (4) an ordinarily skilled designer’s experience and creativity, and (5) ornamental features that are commonplace in the relevant field.
Although a “basically the same” primary reference is not required to show obviousness, it is still necessary to find a primary reference that when considered alone or combined with other references or record supported reasons, teaches every material element of the claimed design that has an impact on the design as a whole.
Whether a particular design feature is considered to be a material factor in influencing a design’s overall appearance may be affected by how crowded the prior art is and how complex the design is. In a crowded field of prior art, an ordinary designer may consider even small design details as affecting the overall appearance, whereas in a less crowded field of prior art, smaller design details may have less of an impact on the overall appearance of the designs. Consequently, even though there may be more analogous designs and design components to draw from in a field of crowded prior art, it may be harder to show that the combination of references teaches every material element of the claimed design when considered as a whole.
If the proposed combination of the references destroys the fundamental characteristics of the primary reference, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art.
It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.
When comparing the prior art references to the claimed design, the focus must be on overall design characteristics and not on broad design concepts.
The more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.
Final Note: This article discusses current and potential legal principles and issues related to obviousness in design patent law post LKQ v. GM. The arguments and approaches contained herein do not necessarily reflect those the author would assert during litigation.
