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IP Alert: "Words Matter" Trend Continues, Applying to Design Patent's Prosecution Prior Art

October 19, 2021

On October 4, in In re: SurgiSil, the Federal Circuit continued its trend of using the language of a design patent to limit the design. Unlike past cases, however, language in SurgiSil was used to limit the effectiveness of a reference cited against the design application. Further, the Federal Circuit considered both the language used in the cited reference and in the design application itself. 

In SurgiSil, the Federal Circuit tackled the issue of whether a design patent related to the configuration or shape of an article should be permitted to cover a design per se, or whether the scope of a design patent should be limited to the identified article of manufacture. The Federal Circuit chose the latter: i.e., designs do not cover designs per se, but rather are limited to specific articles of manufacture.

The design application at issue covered a medical-grade lip implant (first image below) and was rejected based on allegedly anticipating art tool used for shading pastels and charcoal called the Gray Paper Stump as illustrated in a catalog called “Dick Blick Art Materials” (second image below). 



Design App. No. 29/491,550



Gray Paper Stumps
Dick Blick Art Materials catalog


In the initial appeal, the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s rejection of the design application, noting that whether a reference is analogous art is irrelevant to whether that reference anticipates. The issue before the Federal Circuit was whether the PTAB’s reliance on such a wholly unrelated reference (i.e., an art tool) was proper in the anticipation context for a design patent covering a lip implant. The Federal Circuit reversed the PTAB and, in doing so, noted that a design claim is limited to the article of manufacture identified in the claim and does not broadly cover the design in the abstract.

This case tracks the trend the Federal Circuit started in the 2019 Home Expressions case, in which the Federal Circuit held that claim language specifying a particular article of manufacture limited the scope of the design patent. In that case, the Federal Circuit noted that the asserted design was for a “Pattern for a Chair” (first image below) and did not cover a similar Y-pattern design used in a basket (second image below).


US Design Pat. No. D677946


Accused Infringing Basket

The moral of these stories remains: be careful what you state in your patent applications. Design patent applicants will want to make sure to use broad enough language for enforcement but must understand that too much breadth opens the door to more prior art being used against their application during examination.

For more information on this topic, please contact Fitch Even partner Edward E. Clair, author of this alert.

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