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e used to supplement the general requirements for
analogous art as follows:
The question in design cases is not whether the
references sought to be combined are in analogous arts in
the mechanical sense, but-whether they are so relatedthat
the appearance of certain ornamental features in one
would suggest the application of those features" to the
other.
Thus, if the problem is merely one of giving an attractive
appearance toasurface, it is immaterial whether the
surface in question is that of wall paper, an oven door, or
a piece of crockery....
On the other hand, when the proposed combination of
references involves material modifications of the basic
form of one: article in view of another, 'the nature' of the:
article involved is a definite factor in determining whether
the proposed change involves [patentable] invention:
Therefore, where the differences between the
claimed design and the prior art are limited to the
application of ornamentation to the surface of an article,
any prior art reference which discloses snbstantially
the same surface ornamentation would be
considered analogous art. Where the differences are in
the shape or form of the article, the natnre of the articles
involved must also be considered.
B. Differences Between the Prior Art and the
Claimed Design
In determining patentability under 35 U.S.c.
103(a), it is the overall appearance of the design that
mnst be considered. In re Leslie, 547 F.2d 116, 192
USPQ 427 (CCPA 1977). The mere fact that there are
differences between a design and the prior art is not
alone sufficient to justify patentability. In re Lamb,
286 F.2d 610, 128USPQ 539 (CCPA 1961).
All differences between the claimed design and the
closest prior art reference should be identified in any
rejection of the design claim under 35 U.S.c. 103(a).
Ifany differences are considered de minimis or inconsequential
from a design viewpoint, the rejection
should so state,
C. Level ofOrdinary Skill in the Art
In order to be unpatentable, 35 U.S.C. 103(a)
requires that an invention must have been obvious to a
designer having "ordinary skill in the art" to which
the subject matter sought to be patented pertains. The
"level of ordinary skill in the art" from which obviousness
of a design claim must be .evaluated under
DESIGN PATENTS 1504.03
35 U.S.C. 103(a) has been held by the courts to be the
perspective of the "designer of ... articles of the types
presented." In re Nalbandian, 661 F.2d 1214, 1216,
211 USPQ 782, 784 (CCPA 1981); In re Carter, 673
F.2d 1378,213 USPQ 625 (CCPA 1982).
D. Objective Evidence of Nonobviousness
(Secondary Considerations)
Secondary considerations, such as commercial success
and copying of the design by others, are relevant
to the evaluation of obviousness of a design claim.
Evidence of nonobviousness may be present at the
time a prima facie case of obviousness is evaluated or
it may be presented in rebuttal of a prior obviousness
rejection.
II. PRIMA FACIE OBVIOUSNESS
Once the factual inquiries mandated under Graham
v. JohnDeere Co., 383 U. S. 1, 148 USPQ 459 (1966),
have been made, the examiner must determine
whether they support a conclusion of prima facie
obviousness. To establish prima facie obviousness, all
the claim limitations must be taught or suggested by
the prior art.
In determining prima facie obviousness, the proper
standard is whether the design would have been obvious
to a designer of ordinary skill with the claimed
type of article. In re Nalbandian, 661 F.2d 1214,
211 USPQ 782 (CCPA 1981).
As a whole, a design must be compared with something
in existence, and not something brought into
existence by selecting and combining features from
prior art references. In re Jennings, 182 F.2d 207,
86 USPQ 68 (CCPA 1950). The "something in existence"
referred to in Jennings has been defined as "....a
reference...· the design characteristics ofwhich are
basically the same as the claimed design...." In re
Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA
1982) (the primary reference did "...not give the same
visual impression..." as the design claimed but had a
"...different overall appearance and aesthetic
appeal...".) Hence, it is clear that "design characterise
tics" means overall visnal appearance. This definition
of "design characteristics" is reinforced in the decision
of In re Harvey, 12 F.3d 1061, 1063,29 USPQ2d
1206, 1208 (Fed. Cir. 1993), and is supported by the
earlier decisions of In re Yardley, 493 F.2d 1389, 181
USPQ 331, 334 (CCPA 1974) and In re Leslie, 547
1500-25 August 2001