THE USPTO FAILS TO CONSIDER COMPARISON PRIOR ART IN ANTICIPATION REJECTIONS

There is a serious problem in the USPTO design examination procedure regarding the failure to cite comparison prior art when rejecting a design patent claim based on 35 USC 102 (anticipation).

I am not aware whether the USPTO has ever applied a purported 102 reference to the claimed design by comparing them in the context of the prior art. This is contrary to established case law as summarized in the en banc Egyptian Goddess decision.

Interestingly, the MPEP 1504.02 correctly says:

          “For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). In International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir. 2009), the Federal Circuit held that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.” Under the ordinary observer test, “‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.’” Gorham, 81 U.S. at 528. In Egyptian Goddess, an en banc panel of the Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the differences between the patented design and the accused product in the context of the prior art.’” Seaway, 589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting Egyptian Goddess Inc. v. Swissa Inc.,[stet] 543 F.3d 665, 676, 88 USPQ2d 1658, 1666-67 (Fed. Cir. 2008) (en banc). The court also explained that “‘when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.’” Id. (emphasis added).”

 In Egyptian Goddess, Inc. v. Swisa Inc. (Fed. Cir. 2008), the court clearly stated the importance of considering the prior art in determining infringement.  The court said:

“In [two early cases], the courts emphasized that the defendant's product would appear different from the plaintiff's protected design to an ordinary observer aware of the great number of closely similar prior art designs. In Applied Arts, the accused ash tray would not appear to be the same as the claimed ash tray as long as "similitude of appearance is . . . judged by the scope of the patent in relation to the prior art." 67 F.2d at 429. And in Sears, Roebuck, the court concluded that the accused fruit juicer would not appear similar to the claimed design if the fact-finder performed the required "comparison of the features of the patented designs with the prior art and with the accused design." 140 F.2d at 396. Not only is this approach consistent with the precedents discussed above, but it makes sense as a matter of logic as well. Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.  (emphasis added).”

The entire tenor of Egyptian Goddess is that under the ordinary observer test, the question of whether the patented and accused designs are “substantially the same” must be made “in the context of the prior art”, i.e., with due consideration of comparison prior art.  According to the court: “[I]t makes sense as a matter of logic…. it can be difficult to answer the question whether one thing is like another without being given a frame of reference.”

As noted above, in deciding questions of anticipation, MPEP 1504.02 says: [T]he Federal Circuit held [in International Seaway] that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.”  

However, despite citing Egyptian’s “in the context of the prior art” in MPEP 1504.02, there is no further explanation in the MPEP of whether or how an examiner should take comparison prior art into account in making an anticipation rejection.

Egyptian Goddess did excuse consideration of the prior art under one condition:

          “In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham. (emphasis added).”

Thus, according to Egyptian, one need not consider the prior art if two designs are “sufficiently distinct”.  But obviously if a claimed design is “sufficiently distinct” from a potential 102 reference, there is no ground for a 102 rejection.

The Federal Circuit followed the “sufficiently distinct quote by saying:

          “In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. (emphasis added).”

Again, the court emphasized the importance of considering comparison prior art in infringement determinations, and by extension in anticipation rejections during prosecution.

As evidence of the USPTO’s failure, following is the actual text of an anticipation rejection that occurred during the prosecution of U.S. Pat. No. D770,027 (USSN 29/531,907) claiming a ceiling fan.  The claimed design and applied 102 Haiku reference are as shown below:

USPTO 102 Rejection (US Pat. No. D770,027)

The rejection from the examiner’s Office action in its entirety follows:

          “The claim is rejected under 35 USC 102(a)(1) as being clearly anticipated by “Haiku 5 Foot Ceiling Fan” reference as seen on YouTube because the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

           “The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design.  The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).

           “Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

          “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented and an accused article’s design cannot, and shall not, prevent a finding of infringement’, so too minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).”

This is not an isolated occurrence;  the same language was used in the same application based on two other 102 rejections..

Regardless of the merits of this rejection, it’s clear that comparison prior art was not considered.

There would be many benefits if the USPTO had to take into account comparison prior art in making 102 rejections.  For one thing, the subjectivity inherent in current 102 rejections would disappear. As evidenced by the excerpt above (“The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design”)  examiners now simply have to allege that the 102 reference and the claimed design are “substantially the same”, which is rife with subjectivity.  If they had to consider comparison prior art, it would bring some objectivity to the rejection, a frame of reference to put “substantially the same” in context, as required by Egyptian Goddess. 

Also, 102 rejections allow examiners to avoid having to make 103 rejections which require examiners to undertake a more rigorous analysis. A 103 rejection necessitates that they identify a primary reference which is “basically the same” as the claimed design (but keep your eye on the currently pending en banc case of LKQ v. GM case that is reconsidering the basis for design patent obviousness).

As an aside, I have long been a critic of International Seaway that equated the test for anticipation with the test for infringement. I’ve published an article about it:  “Design Patents Are Sinking in International Seaway”.  And Seaway puts the USPTO in the unheard of position of essentially deciding whether one design infringes another.

In summary, the failure of the USPTO to take into account comparison prior art in anticipation rejections of a design patent claim under 35 USC 102, as evidenced by the foregoing, is simply wrong. The USPTO needs to do something about it.