Missing Component Does Not Preclude a Prior Art Reference from Being a Primary Reference in a Design Case

| Serah Friedman, Ph.D.Christie Matthaei


Before Prost, Newman and Moore.  Appeal from the Patent Trial and Appeal Board.

Summary: A proper primary reference can have slight differences in design if, in light of overall similarities, it conveys basically the same visual impression as the claimed design.

Campbell Soup Company (“Campbell”) petitioned the Patent Trial and Appeal Board for inter partes review of two design patents on can dispensers owned by Gamon Plus, Inc. (“Gamon”).  After institution, the Board held that Campbell did not establish unpatentability by a preponderance of evidence because neither of the prior art references included in Campbell’s petition were “similar enough to the claimed designs to constitute a proper primary reference” since they failed to disclose “a cylindrical object” such as a can “in a similar spatial relationship to the claimed design.”  Campbell appealed.   

On appeal, the Federal Circuit noted that in the context of design patents, the inquiry under section 103 requires a fact finder to find a single reference whose design characteristics are basically the same as the claimed design before applying secondary references to modify it. To identify a primary reference, one must (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates basically the same visual impression.

The Federal Circuit vacated the Board’s decision finding that, while one of the prior art references did not claim a cylindrical object, the parties did not dispute that the prior art design was made to hold a cylindrical object in its display area.  Thus, given overall similarities between the prior art reference and the claimed designs, the “ever-so-slight differences in design” do not properly result in the conclusion that the prior art reference is not a “single reference that creates ‘basically the same’ visual impression” as the claimed designs.

Judge Newman dissented finding that the majority improperly modified the prior art reference to add a cylindrical object. 

Editor: Paul Stewart