While it may not be common to receive a prior art rejection for a design patent, it certainly can happen, especially if the design is broadly claimed. In utility patents, the issue of obviousness is an analysis of what a person having ordinary skill in the art would find to be obvious in light of the same or similar problem. When it comes to design patents, obviousness rests on the “ordinary observer” test, which is an analysis of the claimed design and its prior art seen as a whole instead of comparing the claimed design to the prior art design element by element. While the ordinary observer test requires a consideration of the design as a whole in the context of its environment features, the claim scope remains very important in terms of how the design will be examined.
The typical Section 103 (obviousness) analysis for utility patents tends to be a little bit more like arithmetic – the examiner is looking for the claimed elements a, b and c. The U.S. Patent and Trademark Office’s (USPTO’s) obviousness assessments for utility patents often occur in a vacuum, without the context of the environment. When looking at designs, it is much more important to think about the context of the claimed design, which is usually presented in the form of unclaimed or dashed elements.
When the USPTO is using a combination of designs to assert that the claimed design is rendered obvious, the ordinary observer test asks whether a designer of ordinary skill would have combined the teachings of the prior art to create the same overall visual appearance as the claimed design. In this instance, the examiner has to present a primary reference, which is a single reference that contains basically the same visual impression as the claimed design. A primary reference cannot have substantial differences in the overall visual appearance, and it cannot need major modifications to create the similarity in overall visual appearance. Next, if a primary reference exists, the secondary reference is assessed to determine whether an ordinary designer would have modified the primary reference in view of the secondary reference to create an overall appearance that is the same as the claimed design.
So, when dealing with a combination of references, the main or primary reference actually has to be pretty darn close to the claimed design. In fact, it has to be basically the same as the claimed design, with no substantial differences, no major modifications needed. The secondary reference only compensates for the slight deficiencies of the primary reference.
While it may sound simple, it’s really not a black and white test – what is a primary reference? What looks basically the same as something else? As always, standards of proof and procedural posture can throw a real monkey wrench into the analysis.
Find out more on the latest episode of IP Practice Vlogs.