by Ashley Nicholls

On October 4, 2021, the Federal Circuit reversed the decision of the Patent Trial and Appeal Board in In re SurgiSil, L.L.P., which affirmed an examiner’s rejection of SurgiSil’s (Applicant) Design Patent Application No. 29/491,550.  In re SurgiSil, L.L.P., No. 2020-1940, 2021 WL 4515275 (Fed Cir. Oct. 4, 2021).  The Court found that SurgiSil’s claimed lip implant was not anticipated by a design for a rolled-paper art tool or “stump” used for artistic blending/smoothing.  Although the cited “stump” art tool resembled SurgiSil’s claimed lip implant (see below), the Court found that “[a] design claim is limited to the article of manufacture identified in the claim; [and] it does not broadly cover a design in the abstract.” Id. at 3.

Thus, with In re SurgiSil, the Federal Circuit appears to again focus on the statutory language “the article of manufacture” when interpreting design claims, establishing that applicable prior art is limited to the “article of manufacture” to which the claim applies. Likewise, in another recent decision, the Federal Circuit also emphasized the importance of the recited “article of manufacture” when enforcing a design patent.  See, e.g., Curver Luxembourg SARL v. Home Expressions Inc., 938 F.3d 133 (Fed. Circ. 2019) (finding that the article of manufacture recited in the title, figure descriptions, and claims limited the scope of enforceability of a design patent).

Based on these cases, Applicants for design applications should carefully consider how they characterize their design, in the title, figure descriptions, and claims, as the words used in the specification of the design application may be construed to connote an underlying “article of manufacture.”  Applicants should further understand that any implied article of manufacture may make it easier to prosecute their design application, as prior art from a different “article of manufacture” may be inapplicable, but at the same time may make broad enforcement of a granted design patent more difficult.