How are multiple references combined in design patent obviousness rejections?
The MPEP provides guidance on combining multiple references in design patent obviousness rejections:
“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.”
However, the MPEP emphasizes that there must be a proper rationale for combining 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 MPEP also provides a long-standing test for properly combining references:
“…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).
This guidance emphasizes that when combining references, examiners must consider whether the relationship between the designs would suggest applying features from one to the other, rather than simply piecing together unrelated elements.
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