Design Patent Claims Limited to Recited Article of Manufacture

In In re: SurgiSil, L.L.P., No. 2020-1940 (Fed. Cir. Oct. 4, 2021), the Federal Circuit reversed the Board’s decision affirming an examiner’s rejection of Surgisil’s design patent application.

Surgisil’s application claims “an ornamental design for a lip implant as shown and described” in the below figure:

The examiner rejected the sole claim as anticipated by a catalog disclosing an “art tool called a stump.” The stump is made of “tightly spiral-wound, soft gray paper,” is used “for smoothing and blending large areas of pastel or charcoal,” and is shown below:

The Board affirmed the rejection, finding the differences in shape between the claimed design and the stump to be minor. It rejected Surgisil’s argument that the catalog could not anticipate the claim because it disclosed a “very different” article of manufacture than a lip implant and, in the Board’s view, “it is appropriate to ignore the identification of the article of manufacture in the claim language.” 

The Federal Circuit reversed. It held that “[a] design claim is limited to the article of manufacture identified in the claim.” Because the claim recited a “lip implant,” and the figures depicted in the application illustrate a lip implant, the Court held “the claim is limited to lip implants and does not cover other articles of manufacture.” The Board’s rejection based on prior art showing an art tool was improper despite the similar appearance between the two.