LKQ v. GM REDUX – WITH APOLOGIES TO THE USPTO

In my blog post yesterday I predicted that it would take a long time for the USPTO to issue guidance to Group 2900 examiners on how to handle obviousness rejections based on the en banc decision of the Federal Circuit in the LKQ v. GM case.

I was wrong.

On May 22, 2024, one day (!) after the decision was handed down, the USPTO issued “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations, LLC”.  It was signed by Kathi Vidal, Director of the USPTO.

The document in large part reiterated what the CAFC said in it’s opinion (there is something new!), but the speed with which the guidance was released must be a record for the USPTO as concerns design patents.  Kudos!

Interestingly, the guidance included the following:

“… USPTO personnel must apply a flexible approach to obviousness similar to that applied in utility applications.  See MPEP 2141 et seq. for the guidelines to follow in utility applications.”

The Federal Circuit, in doing away with Rosen’s “basically the same” requirement for a primary reference and Durling’s “so related” requirement for a secondary reference, said that the new gateway for prior art is whether it’s “analogous”  to the claimed design, setting forth the 2-part test used in utility patent examinations to determine analogous art, without hinting as to how prior art is analogous under the second part of the test, the part that addresses whether a reference outside the field of endeavor is analogous.   

Responding to the analogous art issue, the USPTO said:

“As the Federal Circuit did not define how to determine whether a prior art design doutside the field of endeavor of the article of manufacture is analogous, the design examiner should consider the degree to which an ordinarily skilled design would be motivated to consider other fields (emphasis added).” [ED note: absent was any guidance for how to determine motivation.]

The guidance went on (this is the new part):

“If the examiner questions whether a design is analogous art, the examiner should confer with their supervisory primary examiner (SPE). The USPTO will compile examples of when it has determined a reference to be analogous art, and those examples will reduce the need to discuss the determination with an examiner’s SPE over time.”

Then, getting to the meat of the issue, the USPTO reiterated almost exactly what the CAFC said about how to determine obviousness.  Interestingly, the USPTO guidance directed examiners to use Form Paragraph 15.19.aia to make a rejection based on two or more references.  This form paragraph simply says:

MPEP 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

“The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.”

Finally, the examination instructions said that “The USPTO is continuing to study LKQ in the context of existing precedent; further guidance and training will be forthcoming.”

Everyone in Group 2900, as well as the design patent bar,  anxiously awaits such further guidance.