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Importance of the Article of Manufacture for Determining Design Claim Scope

| Sean S. KimDaniel P. Hughes

IN RE: SURGISIL, L.L.P.

Before Moore, Newman, and O’Malley.  Appeal from the Patent Trial and Appeal Board

Summary: A design patent claiming the design of an article of manufacture cannot be anticipated by the design for a different article of manufacture.

SurgiSil filed a design application claiming an ornamental design for a lip implant. The examiner rejected the sole claim of SurgiSil’s design patent application as anticipated by an art tool called a stump. SurgiSil appealed to the PTAB, arguing that an art tool cannot anticipate its claim because the claim was directed to a lip implant and not art tools. The Board upheld the examiner, finding that “it is appropriate to ignore the identification of the article of manufacture in the claim language” when considering the validity of design patents.

On appeal, the Federal Circuit disagreed, finding that a design patent protects a design for a specific article of manufacture and that a design is inseparable from the article to which it is applied. Thus, the Federal Circuit reversed, holding that the Board erred in finding that SurgiSil’s claimed lip implant was anticipated by an art tool.

Editor: Paul Stewart