In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See 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. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See 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. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See 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. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

A rejection under 35 U.S.C. 103 based on a single nonanalogous reference would not be proper. The reason is that under 35 U.S.C. 103, a designer of ordinary skill would not be charged with knowledge of prior art that is not analogous to the claimed design.

A rejection under 35 U.S.C. 103 based on a single nonanalogous reference would not be proper. The reason is that under 35 U.S.C. 103, a designer of ordinary skill would not be charged with knowledge of prior art that is not analogous to the claimed design.

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.

The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.

The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.

When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

When modifying the surface of a primary 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 primary reference. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

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. See 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 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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). See also Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021) and MPEP § 716.01(b).

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. See 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 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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). See also Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021) and MPEP § 716.01(b).

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. See 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 the applicant.” See In re Haruna, 249 F.3d 1327, 58 USPQ2d 1517 (Fed. Cir. 2001).

“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 the applicant.” See In re Haruna, 249 F.3d 1327, 58 USPQ2d 1517 (Fed. Cir. 2001).

The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103 extends to all “analogous arts.”

In order to be unpatentable, 35 U.S.C. 103 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 35 U.S.C. 103 has been held by the courts to be the perspective of the “designer of… articles of the types presented.” See 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).

In order to be unpatentable, 35 U.S.C. 103 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 35 U.S.C. 103 has been held by the courts to be the perspective of the “designer of… articles of the types presented.” See 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).

In order to be unpatentable, 35 U.S.C. 103 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 35 U.S.C. 103 has been held by the courts to be the perspective of the “designer of… articles of the types presented.” See 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).

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. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

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. See 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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

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. See 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 of which are basically the same as the claimed design….” See 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 characteristics ” means overall visual 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 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

The following form paragraph may be used in an obviousness rejection under 35 U.S.C. 103, where appropriate.

For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e). See note 4 below.

2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e). See note 4 below.

4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

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 substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.

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 substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.

In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See 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. See In re Lamb, 286 F.2d 610, 128 USPQ 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. If any differences are considered de minimis or inconsequential from a design viewpoint, the rejection should so state.

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. If any differences are considered de minimis or inconsequential from a design viewpoint, the rejection should so state.

Examiners are advised that differences between the claimed design and a primary reference may be held to be minor in nature and unrelated to the overall aesthetic appearance of the design with or without the support of secondary references. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such differences are shown by secondary references, they should be applied so as to leave no doubt that those differences would have been obvious to a designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963).

Examiners are advised that differences between the claimed design and a primary reference may be held to be minor in nature and unrelated to the overall aesthetic appearance of the design with or without the support of secondary references. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such differences are shown by secondary references, they should be applied so as to leave no doubt that those differences would have been obvious to a designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963).

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. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010). For more information on evaluating secondary considerations, see subsection III below and MPEP § 716 et seq.

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. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010). For more information on evaluating secondary considerations, see subsection III below and MPEP § 716 et seq.

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. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010). For more information on evaluating secondary considerations, see subsection III below and MPEP § 716 et seq.

Once factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) have been made, the examiner must determine whether they establish a prima facie case of obviousness. To establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.

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. See also MPEP § 2145. 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 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.

“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 the applicant.” See In re Haruna, 249 F.3d 1327, 58 USPQ2d 1517 (Fed. Cir. 2001).

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

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. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010). For more information on evaluating secondary considerations, see subsection III below and MPEP § 716 et seq.

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. See also MPEP § 2145. 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 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.

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. See 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 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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). See also Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021) and MPEP § 716.01(b).

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. See 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 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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). See also Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021) and MPEP § 716.01(b).

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c), subsection I.

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c), subsection I.

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c), subsection I.

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c), subsection I.

While the determination of whether arts are analogous is basically the same for both design and utility inventions (see MPEP § 904.01(c) and § 2141.01(a)), In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956) provides specific guidance for evaluating analogous arts in the design context, which should be used to supplement the general requirements for analogous art as follows:

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.

When modifying the surface of a primary 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 primary reference. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.

A claimed design that meets the test of novelty must additionally be evaluated for nonobviousness under 35 U.S.C. 103.

1. In bracket 1, insert document number that qualifies as prior art under 35 U.S.C. 102(a)(2).

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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).

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. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).

4. This form paragraph should only be used ONCE in an Office action.

7. This form paragraph should only be used ONCE in an Office action.

2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) / 35 U.S.C. 103(a) should be made.

3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under pre-AIA 35 U.S.C. 102(e) / 35 U.S.C. 103(a) should be made.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e) and a common assignee.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e).

It should be noted that for ease of discussion purposes, any reference to 35 U.S.C. 103 in this section refers to both AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a).

The basic factual inquiries guiding the evaluation of obviousness, as outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), are applicable to the evaluation of design patentability:

• (A) Determining the scope and content of the prior art;
• (B) Ascertaining the differences between the claimed invention and the prior art;
• (C) Resolving the level of ordinary skill in the art; and
• (D) Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).

Once factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) have been made, the examiner must determine whether they establish a prima facie case of obviousness. To establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c), subsection I.

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

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.

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. See also MPEP § 2145. 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 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.

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. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).

For additional information regarding the issue of objective evidence of nonobviousness, attention is directed to MPEP § 716 through § 716.06.

1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a copending application that would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented.