Apple Design Patent Rejected in Reexamination by USPTO

By Gene Quinn
August 18, 2015

Fig. 1 from U.S. Design Patent D618,677.

Fig. 1 from U.S. Design Patent D618,677.

Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the center of their never-ending patent battle with Samsung. The patent in question – U.S. Design Patent D618,677 – covers the appearance of the surface of an electronic device.

Many of the news accounts incorrectly state that the Apple design patent has been invalidated. A non-final rejection is just that – not final. Apple will have an opportunity to respond to this USPTO action. If Apple is not successful in convincing the patent examiner to change his mind they will be able to appeal the decision to the United States Court of Appeals for the Federal Circuit. Thus, this matter is a long way from over. Having said that, Florian Mueller (who not surprisingly writes an excellent article on the topic) thinks the odds are long that Apple will be able to overcome this rejection.

One new problem Apple now faces with respect to the ‘677 design patent is that the patent examiner has determined that the priority claim made in the patent “must be canceled.”

A priority claim is made in a patent application to a previous filing that has a disclosure that supports the invention being claimed in the present application. In this situation, the ‘677 design patent application was filed on November 18, 2008, but priority was claimed to prior filed design patent applications. More specifically, the ‘677 design patent was filed as a division of Application No. 29/282,2834, which was filed on July 30, 2007, which was itself filed as a continuation of Application No. 29/270,888, which was filed on January 5, 2007. Thus, when design patent ‘677 was initially examined it was viewed as having priority back to the January 5, 2007 filing date of the first application in the chain.

The patent examiner in the reexamination explained:

The patent owner is advised that the design in this patent is not described in the originally filed disclosure of earlier applications, 29/282834 or 29/270999. The design in this patent is different from that of the earlier applications in that the new claim includes a front surface entirely covered with a translucent black surface without color contrast and excludes the surface within the round home button while including the entire capsule-shaped speaker opening.

Therefore the claim in this patent does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, needed to claim benefit under 35 U.S.C. 120. When a design is changed, the result is a new and different design; the original design remains just what it was.

Without the ability to claim priority back to January 5, 2007, two other Apple design patents – U.S. Design Patent D602,014 (filed August 31, 2007) and U.S. Design patent D618,204 (filed June 27, 2007) – were prior art. These two references qualify as prior art as of the date they were filed under pre-AIA 35 U.S.C. 102(e), and were used to support one of three separate obviousness rejections. The ‘204 design patent was also used to support a pre-AIA 102(e) rejection based on the fact that the appearance of the planar front surface of the ‘204 design patent is substantially the same as that of the patented design.

In the first obviousness rejection the examiner used U.S. Design Patent D546,313 in view of either WO 2006/038499 or Japanese Patent JPD1235888. The examiner concluded that although the invention is not identically disclosed in the prior art the difference between what is claimed in the ‘677 design patent and the prior art would have been obvious to one of skill in the art a the time the invention was made. More specifically, the examiner explained that it would have been obvious to expand the size of the display.

In the second obviousness rejection the examiner used Japanese Patent JPD1204221 as the primary reference. The examiner explained that this prior art provided a planar front surface, which included an elongated feature at the top and bottom of the screen. The difference between this prior art and the claim in the ‘677 design patent are that the ‘677 design patent has a display that is narrower and the feature at the bottom is circular rather than elongated. The examiner concluded that it would have been obvious to a designer of ordinary skill to make these changes in light of the other cited prior art.

Thus, even if Apple is ultimately able to establish that they are indeed entitled to January 5, 2007 as a priority date there will be hurdles they must overcome.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 6 Comments comments.

  1. David Stein August 18, 2015 12:28 pm

    I spent a big chunk of last night looking at this case – it’s pretty fascinating. Several thoughts:

    1) The reexamination office action is strikingly thorough. I’ve never seen an examiner present such a well-articulated and detailed office action. (I’m certain that the gravity of the situation was not lost on the examiner!)

    2) In retrospect, this looks like a basic tactical error: Apple waited until late 2008 to file this critical patent application – and then filed a patent application that was heavily focused on the color of the display, claiming priority to parent applications showing no such thing.

    Perhaps Apple’s awareness or irritation over Samsung’s blatant copying peaked around that time. It’s probably unfair to evaluate Apple’s judgment retroactively; these scenarios can look like my neat summary above on reflection, but extremely messy and haphazard in the moment.

    3) This verdict is very disappointing, for one key reason: Samsung’s copying of Apple was intentional, indisputable, and blatant. Apple obtained, and submitted as evidence at the trial, a 132-page Samsung internal document showing exactly which features it wanted to copy, literally, into the Galaxy S. That Apple’s tactical error enabled Samsung to get away with a whole line of blatant knockoff products is an unfair result – but at the moment, it seems like the legally correct one.

    4) This is rather embarrassing for the PTO. If I recall correctly, around the time this patent issued, the main lobby of the USPTO Madison building had a huge display of billboards showing off Apple’s innovation and the resulting patents – this was probably one of them. Reversing a key patent in a billion-dollar verdict based on a basic technical error – one that the PTO only notices now, in retrospect – does not inspire confidence in the system.

    5) Finally, this case shines a gigantic spotlight on “the elephant in the room” of the patent system. Patent procurement is both affordable and accessible – thanks to small-entity and micro-entity discounts; the USPTO’s own Inventors Assistance Center; and the somewhat normalized working rates of patent practitioners. But patent enforcement is not only outrageously expensive – it’s also unreliable, even for an entity with the interest and resources of Apple. The anti-patent tilt of the enforcement wing of patent law (both courts and the reexam apparatus, with its brutal invalidation rate) is eroding the entire foundation of patent law.

  2. Curious August 18, 2015 2:06 pm

    The anti-patent tilt of the enforcement wing of patent law (both courts and the reexam apparatus, with its brutal invalidation rate) is eroding the entire foundation of patent law.
    I agree. Being able to procure a patent (while relatively inexpensive, it is still not cheap — particularly if you get stuck in 3600) means little if you cannot enforce the patent.

  3. Night Writer August 18, 2015 3:54 pm

    Note that Sincavage co-signed the OA.

  4. EvonneTotten August 18, 2015 8:21 pm

    It all started when Chris Messina, not the American actor but the open source advocate, posted a message with a hash symbol on Twitter in August 2007. If your business products or services are ones that people like to talk about you will have a much easier time acquiring social media interest, fans and followers. If we balance the amazing technologies that we have and all the world of information they hold with personal communication and hard work, the results will be more positive, the accountability will show what it is supposed to show, and students will leave our doors knowing more than when they came in.

  5. Edward Heller August 19, 2015 6:34 am

    I think Apple would be wise to challenge the constitutionality of reexaminations that amount to a collateral attack on court judgments. Samsung had a full and fair opportunity to litigate the validity of this patent. The judgment in their case against Apple is final. What is going on here is undermining our legal system, not just the patent system.

  6. Gene Quinn August 19, 2015 10:24 am

    With only 5 legitimate comments and over 100 spam comments that have been able to defeat the spam filter it is time to close comments on this article.

    -Gene