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skill is only charged with knowledge of art related to
that of the claimed design. Second, the ornamental
featnres of the references must be closely related in
order for a designer of ordinary skill to have been
motivated to have modified one in view of the other.
Hence, when modifying a basic reference, a designer
of ordinary skill would have looked at design features
of other related references for precisely the purpose of
observing the ornamental characteristics they disclosed.
Analogous art can be more broadly interpreted
when applied to a claim that is directed to a design
with a portion simulating a well known or naturally
occurring object or person. The simulative nature of
that portion of the design is prima facie evidence that
art which simulates that portion would be within the
level of ordinary skill under 35 U.S.c. 103(a).
2. Non-analogous Art
When modifying the surface of a basic reference so
as to provide it with an attractive appearance, it is
immaterial whether the secondary reference is analogous
art, since the modification does not involve a
change in configuration or structure and would not
have destroyed the characteristics (appearance and
function) of the basic reference. In re Glavas,
230 F.2d 447, 109 USPQ 50 (CCPA 1956).
m. REBUTTAL OF THE PRIMA FACIE CASE
Once a prima facie case of obviousness has been
established, the burden shifts to the applicant to rebut
it, if possible, with objective evidence of nonobviousness.
Examples of secondary considerations are commercial
success, expert testimony and copying of the
design by others. Any objective evidence of nonobviousness
or rebuttal evidence submitted by applicant,
including affidavits or declarations under 37 CPR
1.132, must be considered by examiners in determining
patentability under 35 U.S.C. 103('1).
When evidence of commercial success is submitted,
examiners must evaluate it to determine whether
there is objective evidence of success, and whether
the success can be attributed to the ornamental design.
Litton System, Inc, v. Whirlpool Corp., 728 F.2d 1423,
221 USPQ 97 (Fed. Cir. 1984); In re Nalbandian, 661
F.2d 1214, 211 USPQ 782 (CCPA 1981). An affidavit
DESIGN PATENTS 1504.03
or declaration under 37 CFR 1.132 has minimal evidentiary
value on the issue of commercial success if
there is no nexus or connection between the sales of
the article in which the design is embodied and the
ornamental features of the design. Avia Group lnt'l
Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548
(Fed. Cir. 1988).
Submission of expert testimony must establish the
professional credentials of the person signing the affidavit
or declaration, and should not express an opinion
on the ultimate legal issue of obviousness since
this conclusion is one of law. Avia Group Int'l Inc. v.
L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cit.
1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d
1082, 227 USPQ 337 (Fed. Cir. 1985).
With regard to evidence submitted showing that
competitors in the marketplace are copying the
design, more than the mere fact of copying is necessary
to make that action significant because copying
may be attributable to other factors such as lack of
concern for patent property or indifference with
regard to the patentee's ability to enforce the patent.
Cable Electric Products, Inc. v. Genmark, Inc., 770
F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).
"A prima facie case of obviousness can be rebutted
if the applicant...can show that the art in any material
respect 'taught away' from the claimed invention, ..A
reference may be said to teach away when a person of
ordinary skill, upon reading the reference...would be
led in a direction divergent from the path that was
taken by theapplicant," In re Haruna, 249 F.3d 1327,
58USPQ2d 1517 (Fed. Cir. 2001).
For additional information regarding the issue of
objective evidence of nonobviousness, attention is
directed to MPEP §716 through § 716.06.
The following form paragraph may be used in an
obviousness rejection under 35 U.S.c. 103('1), where
appropriate.
'f[ 15.1835 U.S.c. l03(a) Rejection (Single Reference)
The claim is rejected under 35 U.S.c. 103(a) as being unpatentable
over [1]. Although the invention is not identically disclosed
ordescribed as setforth in35 U;S.c. 102,if thedifferences
between the subjectmatter sought to be patented and the priorart
aresuch thatthe subjectmatter as a whole would have been obvious
at the time the invention was made to a designer having ordinary
skill in the art to which said subject matter pertains; the
invention is not patentable.
1500-27 August 2001