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This week we look at design applications abandoned between October 26 and November 1, 2026 whose files are open to the public and that drew at least one rejection. There were 40 of them: 33 Hague designations and 7 domestic applications from a single family of pan lids.
Two things stand out. First, two examiners framed anticipation refusals around whether the reference was “visually similar” to the claim, which is the obviousness word, not the anticipation test. Neither applicant answered. Second, the applicants who did fight mostly fought about drawings, and lost there, while two obviousness rejections that look vulnerable under LKQ were never tested.
1. The Week in Numbers
- 40 abandoned histories reviewed: 33 Hague designations and 7 domestic applications. Every one had at least one rejection, which is how the batch is collected.
- How they ended: 33 for failure to respond to an Office action, and 7 by express abandonment (the whole pan lid family). 11 had received a final rejection.
- Rejections under 35 USC 112, mostly about the drawings: about 30 files. Section 171 (no article of manufacture): 1 Hague file.
- 102 rejections: 7. 103 rejections: 11. Double patenting: the 7 pan lids, rejected over one another and over co-pending family members.
- Replies on the merits: 11, the 7 pan lids and 4 Hague files. Two more Hague applicants answered only a restriction requirement. Rule 130 or Rule 132 declarations: none. Appeals: none.
- LKQ v. GM cited by an examiner or an applicant: none.
Method note: these are application-level counts across the 40 file histories. One file may carry several grounds, so the categories overlap. The batch is one week long and dominated by Hague designations, so treat the numbers as a snapshot, not as rates.
2. Anticipation by “Visually Similar”
Anticipation of a design requires that the reference be substantially the same as the claimed design under the ordinary observer test of Gorham and International Seaway. “Visually similar” is the language used to pick a primary reference for obviousness. Two refusals this week used the second phrase in place of the first.
A construction machine. In Application No. 35/527,675 (part of a construction machine), the examiner refused the claim under 102(a)(1) over a video of a competing machine published March 10, 2023, and wrote that its appearance “is visually similar to that of the claimed design.” The refusal then quoted Door-Master with the operative words replaced in brackets: “Two designs are [visually similar] if their resemblance is deceptive.” The court’s sentence says “substantially the same,” and later in the same action the examiner did recite the correct Gorham standard, so the refusal states both tests. The video predated even the June 19, 2024 foreign priority date by more than a year, so the result may well have been the same under the right test, but the rejection as written applies the wrong one.
A fuel cell. In Application No. 35/525,407 (fuel cell apparatus), the examiner made three separate 102(a)(1) refusals over web disclosures dated June 2024. Each said the reference was “identical in all material respects” to the claim, citing Hupp v. Siroflex, and then stated: “For anticipation to be found, the two designs must be visually similar,” citing Gorham. The Door-Master quotation that follows was rewritten the same way: “Two designs are visually similar if their resemblance is deceptive.”
The substitution matters most when a reference is close but not identical. A reply pointing out that the examiner applied an obviousness word to an anticipation rejection, and asking for a finding of substantial sameness, costs one paragraph. Neither applicant filed a reply. For the history of how “substantially the same” has drifted in the case law, see our paper From “Substantially the Same” to “Substantially Similar” and “Plainly Dissimilar”.
3. The Grace Period Nobody Invoked
Seven files had a 102 rejection. In two of them the reference was dated within a year of filing, and the examiner pointed to the cure.
A lamp and an article about it. Application No. 35/525,482 (lamp) drew a 112 refusal and, on one reading of the unclear drawings, a 102 refusal over a design-press article dated November 27, 2024 that featured the lamp and named its designer, who is also the first named inventor. The international registration was filed April 3, 2025, about four months later. The examiner set out the Rule 130 route: “the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art.” A one-page declaration stating that the article showed the inventor’s own design would very likely have removed the prior art refusal, leaving only the drawing issues. No reply was filed.
The fuel cell again. The three web disclosures relied on in 35/525,407 were dated June 12 and June 17, 2024, all within a year before the May 28, 2025 filing date. After each refusal the examiner set out the grace-period exceptions of 35 USC 102(b)(1). If those disclosures came from the applicant, the file was one declaration away from overcoming all three.
The other five 102 files show the limits of the grace period. The construction machine video was more than a year old. In 35/525,035 (table tennis table) the reference was a French design available May 3, 2019, five years before filing. In 35/525,299 (magnetic resonance imaging device) the anticipating reference was a Chinese design patent published in June 2020 that the applicant itself had cited.
4. Obviousness Rejections Nobody Tested
A table lamp, argued and then dropped. In Application No. 35/522,690 (table lamp), counsel did argue, as the advisory action put it, that the final rejection gave no rationale for combining the references and “instead concludes obviousness by simple substitution.” The advisory action held the rejection, answering that “the rejection of record relied upon simple substitution as a proper rationale to support obviousness as outlined in MPEP § 2143,” with citations to KSR, In re Fine and In re Jones. Those are utility authorities. Neither side cited LKQ, which requires a record-supported reason why an ordinary designer would have modified the primary reference to create the same overall appearance. The application was then abandoned. On this record, an appeal would have put a pure “simple substitution” rationale in front of the Board, where post-LKQ decisions have not been kind to it.
Two lights, one sentence of reasoning. In Application Nos. 35/527,274 (public lighting fixture) and 35/527,421 (solar light), the examiner combined two online garden-light listings. The reasoning for taking the second listing’s connectors was one sentence. In the first file it read “such addition of one known element in the same field would have been within the skill of an ordinary skilled designer”; in the second, the same sentence spoke of “substitution of one known element for another.” Both rejections also omit the section number in their opening line (“rejected under 35 U.S.C. as being unpatentable”). Neither applicant replied.
Both situations are what LKQ was decided for. An unanswered obviousness rejection with a one-line rationale is often the easiest kind to overcome.
5. Fought, and Lost, on the Drawings
Four Hague applicants replied on the merits. One was the table lamp above. The other three were lost on 35 USC 112 drawing rejections.
A vehicle seat, two replies after final. Application No. 35/524,066 (vehicle seat) drew a 112 rejection over the line quality and consistency of the center strips on the seat and backrest. The applicant replied before the final rejection of April 3, 2026, and twice after it, and received two advisory actions. Counsel argued, fairly, that the Office had never identified exactly where the strips were inconsistent. The second advisory action found that the new drawings fixed two of the four listed problems but not the other two, and then closed the door: “the reproduction fails to comply with 37 CFR 1.1026 and Hague Rule 9(2). Accordingly, the newly amended drawing will not be entered.” The examiner had offered a way out in every action: convert the indefinite portions to broken lines.
A boxing glove and the words “area 1.2.” In Application No. 35/523,673 (boxing glove with grip bar), the reply to the first 112 rejection redrew the glove. The final rejection found new matter in the redrawing, including a lengthened arch, a palm feature that had become flush, and a new reference to “area 1.2” in a figure description that the original specification never mentioned. The claim was “AGAIN AND FINALLY rejected.”
Application Nos. 35/521,227 (cushion) and 35/523,754 (vaporizer) ended more quietly. The cushion applicant replied once and then let a final 112 rejection go. The vaporizer applicant answered only a restriction requirement and never replied to the first 112 rejection that followed.
The lesson is the one the examiners kept repeating. When a Hague reproduction cannot be redrawn without new matter or without breaking the reproduction rules, the practical cure is to disclaim the unclear portion in broken lines, not to keep redrawing it.
6. Seven Pan Lids, All Given Up
The seven domestic files are one family: circular pan lids with a window shaped as a circle, heart, hexagon, triangle, square, star or rectangle, all filed in December 2024. Application Nos. 29/980,338, 29/980,340, 29/980,344, 29/980,345, 29/980,349, 29/980,355 and 29/980,361 each drew a 103 rejection and double patenting rejections against co-pending family members, including provisional same-design rejections under 35 USC 171. The applicant replied, filed terminal disclaimers in some files, and amended drawings, which drew new matter rejections.
The 103 rejection in the circular-window lid shows the examiner’s approach. A plain lid with a round window was the primary reference, and a second lid with concentric shapes supplied the extra ring. The examiner relied on the older rule that unobviousness in overall appearance, “rather than minute details or small variations in design,” is the test, citing In re Frick and In re Lamb, not LKQ.
After final rejections, the applicant expressly abandoned all seven between October 8 and October 16, 2026. The family shows the cost of filing every window shape as its own application: each one drew its own art rejection, its own double patenting rejections against the others, and its own round of drawing amendments.
7. What to Take From the Week
- Read an anticipation rejection for the test it applies. “Visually similar” is not “substantially the same,” and saying so takes one paragraph.
- Check every 102 reference date against the grace period. A design-press article or a web post about your own product inside the year is cured by a Rule 130(a) declaration.
- Answer “simple substitution” and one-sentence rationales with LKQ, and consider an appeal before abandoning a file over one.
- When Hague drawings cannot be cleaned up without new matter, disclaim the problem area in broken lines instead of redrawing it again.
- Before filing a family of close variants, decide which ones the US will treat as one design. Each separate filing brings its own rejections.
