December 7, 2021

Volume XI, Number 341

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December 06, 2021

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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.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 301
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About this Author

Kelly S. Horn Washington D.C. Associate Attorney Patent Litigator Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Associate

As a registered patent attorney, Kelly Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents.

Kelly began her patent counseling practice as a technical advisor after finishing her graduate engineering studies. She continued helping clients with patent prosecution, non-infringement and invalidity analyses, written opinions, and pre-litigation diligence as a patent agent upon registration before the U.S....

202-408-4313
Sydney R. Kestle Patent Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Associate

Sydney Kestle focuses on several areas of patent law, including pre-litigation due diligence, client counseling, litigation in U.S. district courts, and proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Her patent practice covers several technology sectors in the mechanical and electrical arts, including industrial manufacturing, medical devices, and wireless communications and related consumer products. 

Sydney has an undergraduate degree in bioengineering, with a focus in biomechanics tissue engineering and material...

202-408-4241
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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