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In re: SurgiSil, L.L.P. (Fed. Cir. Oct. 4, 2021)

SurgiSil filed a design patent application claiming an “ornamental design for a lip implant.” During examination, the application was rejected as being anticipated by a blending stump which is a similarly shaped art tool. In making the rejection, the examiner cited M.P.E.P. § 1504.02 which states that:

Anticipation does not require that the claimed design and the prior art be from analogous arts. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). It is true that the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases.

SurgiSil appealed the rejection to the Patent Trial and Appeal Board (PTAB) which maintained the rejection explaining that the differences in the articles of manufacture (lip implant vs. blending stump) are irrelevant with respect to anticipation. SurgiSil appealed to the United States Court of Appeals for the Federal Circuit (the Federal Circuit).

The Federal Circuit sided with SurgiSil and stated that a design claim does not cover a design in the abstract but is rather limited to the article of manufacture recited in the claim. As explained by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), “[t]he acts of Congress which authorize the grant of patents for designs” contemplate “not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts.” Consequently, an anticipation rejection of a design claim cannot cite art that is not analogous to the claimed design.

Read the case here.

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