What makes a design patent obvious?
Ever since the LKG v. GM Federal Circuit decision issued in May of 2024, it has become easier to reject design patent applications on the grounds of obviousness under Section 103. What kinds of arguments can you make to respond to a Section 103 obvious rejection in a design patent application.
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What was the old standard for design patent obviousness?
Under the old Rosen-Durling test, a design patent would be obvious if the following requirements were met:
- a single prior art reference, the primary reference, had to be basically the same as the claimed design; and
- any secondary references had to be “so related” to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.
Obviousness rejections under the old Rosen-Durling test were easier to overcome. For example, an applicant could argue that the primary reference was not basically the same as the claimed design.
Those easy days are now gone. As discussed below, the new standard for design patent obviousness takes a more flexible approach which will likely result in more obviousness rejections in design patent applications.
What are the Graham factors of obviousness?
The new design patent obviousness standard uses criteria similar to those used for determining utility patent obviousness. To make a determination that a claimed design is obvious, the following Graham factors must be analyzed:
- scope and content of the prior art;
- differences between the prior art and the claimed design;
- level of ordinary skill in the pertinent art;
- secondary considerations of nonobviousness.
Since the scope and content of the prior art will be a major factor, the remainder of this post will focus more on this first factor.
Analogous Prior Art: What makes prior art references nonanalogous?
Prior art must be analogous in order to be used in a Section 103 obviousness rejection. So what makes prior art analogous? An either/or test as described MPEP 2141.01(a) has been used traditionally in utility patent applications:
a) the reference is from the same field of endeavor as the claimed invention; or
b) the reference is reasonably pertinent to the problem faced by the inventor.
Astute readers will recognize that part b of the above either/or test would seem inapplicable to most design applications. In a typical design application where the ornamental appearance is claimed, there might not be any problems to be solved. Unlike a typical utility patent applications which starts with a problem and then provides a solution, design applications do not necessarily solve any problems, at least not in the way that utility patents would.
Same field of endeavor: Look at the article of manufacture
One could argue that the hypothetical problem faced by the inventor has no place in determining the pertinence of prior art references in design applications. In the vast majority of cases, design inventors are not trying to solve problems. If that were the case, then the primary question in determining analogous prior art would be whether the reference is from the same field of endeavor.
So we are left with the same field of endeavor. In 2021, the landmark Surgisil case required prior art to be from the same or analogous field as the claimed article of manufacture. For design patents on graphical user interfaces, the article of manufacture consists of the screen that displays the GUI. Accordingly, any prior art design patents for screens that show graphical user interfaces would be fair game.
What are examples of nonanalogous prior art?
One way to argue that a prior art reference is nonanalogous is to distinguish between the articles of manufacture. In Surgisil, the claimed design was for a lip implant. The patent examiner rejected the claimed design using a prior art reference showing similar looking artist tool.
The Federal Circuit held that the artist tool was not in the same field as the lip implant and, therefore, could not be used as prior art.
Where should you focus your nonobvious arguments?
More likely than not, astute patent examiners will not use nonanalogous prior art to reject design patent applications. If your claimed design is different from the prior art, it may make sense to focus arguments on this second Graham factor.
Strategize before filing GUI design patents
For a graphical user interface with multiple visual components, careful thought should be given to which visual components will be drawn in solid lines versus broken lines. It pays to strategize before filing.
Prefiling planning with an experienced patent attorney will likely be worthwhile. You may want to file multiple design patent applications covering different combinations of solid and broken line features. Depending on what prior art the examiner may find, having multiple combinations of visual elements drawn in solid lines may provide you with more arguments regarding differences from the prior art.
