The recent decision of the United States Court of Appeals for the Federal Circuit on an appeal by the Patent Trial and Appeal Board seeking to limit prior art for design patent applications to only analogous fields may make it easier for applicants to obtain design patents and make it more difficult for applicants to be invalidated. them.
The decision of the Federal Circuit in In re SurgiSil LLP found that claim language specifying a particular article of manufacture limits the scope of the design patent – and the prior art that can be used to anticipate it.
SurgiSil’s design patent application, US Patent Application No. 29/491,550 titled “Lip Implant”, claims an “ornamental design for a lip implant as shown and described”. The US Patent and Trademark Office (USPTO) Examiner rejected the claim as expected from a catalog disclosing a Dick Blick art tool used to smooth and blend areas of pastel or charcoal drawings.
Claimed “Lip Implant”
Dick Blick’s artistic tool
The Patent Trial and Appeal Board upheld the rejection, concluding that the differences in form between the claimed design and Dick Blick Art Tool were minor and explained that for the purposes of anticipation, “one should ignore the identification of the manufactured item in the Language claim.” Further, although it is not analogous art, “the fact that a reference is analogous art is immaterial as to whether that reference anticipates.” 
On appeal, the Federal Circuit reversed and held that the wording of SurgiSil’s claim limited its invention to a “lip implant” design. As such, the prior art relating to the design of stumps and pencils does not anticipate a claim of a lip implant. 
The ruling extends the Court’s 2019 ruling by Curver Luxembourg, SARL c. Home Expressions Inc. who held that the wording of the claims specifying a particular article of manufacture limited the enforceability of the design patent. In curve, which was discussed in an earlier LawFlash, the Federal Circuit found that a design patent for a “pattern of chair” was not infringed by a basket having a similar pattern, holding that baskets and chairs do not not found in similar artistic fields. The holding of In re SurgiSil so loop the next loop curve and confirms that to properly anticipate a design claim, the prior art must come from an analogous field of art.
Given this decision, while narrower titles may help the USPTO properly classify drawings and examiners to focus their searches, narrowing the pool of prior art will likely make it more difficult for an examiner or applicant to patent to find anticipatory prior art for a design patent application. For applicants, this decision will likely make it easier to obtain design patent protection, particularly for minimalist and partial designs that would previously have been rejected using non-analogous prior art references. In order to maximize patent coverage for a design that could span different fields of the art, applicants may want to carefully consider the appropriate title, file multiple concurrent design applications with different titles, or provide support in the application. to allow for claim amendments or continuation filings directed to different types of articles.
 No. 2020-1940 (Fed. Cir. October 4, 2021)
 ID, op. at 2 o’clock.
 ID, op. at 3.
 938 F.3d 1334 (Fed. Cir. 2019).
 It should be noted that the three juries of the two In re SurgiSil and curve were unanimous and comprised of completely different judges, making a Federal Circuit bench challenge of that decision unlikely.