Federal Circuit Overrules 'Rosen-Durling' Test for Design Patent Obviousness

The court, which reheard the appeal en banc from a PTAB final written decision, cited a plain reading of the statutory scheme for design patents, as well as the Supreme Court's guidance in KSR Int'l Co. v. Teleflex Inc. that obviousness determinations must be flexible. In considering Rosen-Durling's dual requirements that: 1) the primary prior art reference be "basically the same" as the claimed design; and 2) secondary references must be "so related" to the primary reference that features from one would suggest application to the other, the court found these "rigid" standards to be at odds with Supreme Court precedent.

Instead, the Federal Circuit ordered an application of the same Graham factors used to evaluate utility patents, explaining how each factor should be applied within the context of a patented design. Graham v. John Deere Co., 383 U.S. 1 (1966). Specifically, obviousness of a design patent is to be determined based on consideration of:

1. The scope and content of analogous prior art designs — i.e., designs from the same field of endeavor as the article to which the patented design is applied;
2. Differences between the overall visual appearance of the prior art design(s) and the patented design from the viewpoint of an ordinary designer in the relevant field;
3. Level of ordinary skill in the art — i.e., a designer who designs the type of articles to which the patented design is applied;
4. Secondary considerations of nonobviousness — specifically, commercial success, industry praise, and copying.

Background On Design Patent Law

A design patent protects a "new, original and ornamental design for an article of manufacture" and is governed by the same provisions of the Patent Act that relate to utility patents. 35 U.S.C. Section 171(a)-(b).