USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

by Dennis Crouch

On May 22, 2024, the day after the Federal Circuit’s en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court’s overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be “basically the same” as the claimed design, and (2) secondary references be “so related” to the primary reference that features in one would suggest application to the other.  This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination.
Although the primary reference need not be “basically the same” as the claimed invention, the court still maintained that the obviousness analysis begins with a primary reference. The opinion though doe snot grapple with this issue in any depth but rather appears to assume that the analysis will begin with a primary reference, without thoroughly examining potential alternatives.  In the decision, the court states: “In applying Graham factor one, the scope and content of the prior art, a primary reference must be identified.” The court then explains that the purpose of identifying a primary reference is to “protect against hindsight because ‘almost every new design is made up of elements which, individually, are old somewhere in the prior art.'”
The USPTO’s guidance generally tracks the Federal Circuit’s opinion quite closely.   For the first Graham factor – determining the scope and content of the prior art – the memo instructs examiners that a primary reference must still be identified, but it need not be “basically the same” as the claimed design. Rather, it “need only be ‘something in existence’ . . . and ‘visually similar'” to the claimed design to protect against hindsight. The “more visually similar the primary reference is to the claimed design, the better positioned” an examiner will be to make a prima facie obviousness case.
The Vidal memo notes that the primary reference will typically be from the same field of endeavor as the claimed article of manufacture, “but it need not be, so long as it is analogous art.”  And, like the primary reference, any secondary references must also be analogous art. “If a design is not analogous art, it may not be considered by the examiner in assessing obviousness.”
Importantly, the memo acknowledges the Federal Circuit did not fully define the test for analogous art for design patents, particularly how to determine if a reference outside the field of endeavor of the article of manufacture is “reasonably pertinent” to the problem being solved by the new design invention.  The memo provides some limited guidance on this issue – stating that that examiners should consider the degree to which an ordinary designer would be motivated to look to other fields, and confer with their supervisory examiner if there are questions.
For the second Graham factor – ascertaining the differences between the claimed design and the prior art – the USPTO instructs examiners to compare the overall visual appearance from the perspective of an ordinary designer. There is no similarity threshold requirement.
For the third factor – the level of ordinary skill – examiners should consider the knowledge of an ordinary designer who designs articles of the type being examined.
And finally, the memo confirms that, where present, objective indicia of non-obviousness should be considered. The memo notes that existing guidance and case law in this area is still applicable.
Once these factors are considered, the examiner is asked to determine whether the claimed design would have been obvious using the following test:
If an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design, then the examiner should reject the claim under 35 U.S.C. 103 barring convincing secondary indicia of nonobviousness being of record.
In making this inquiry, the memo reiterates several points:

The focus is on the “visual impression of the claimed
design as a whole and not on selected individual pieces.”
Any prior art references relied upon must satisfy the “analogous art” test.
The motivation to combine might not come from any of the references, but there “must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”
As one guide point for combining prior art, the memo note when two references are starkly different, it will be harder to establish a motivation to combine the two sufficient for a prima facie obviousness rejection. This comes straight from the CAFC opinion’s statement that: “Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context. Of course, it follows that the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.”

Overall, the USPTO’s approach closely adheres to the framework outlined by the Federal Circuit. By eliminating the “basically the same” and “so related” requirements, while still maintaining the use of a primary reference and analogous art requirement, the guidance allows for the more flexible approach demanded by the court and Supreme Court precedent like KSR and Graham .
I also like the USPTO approach in that it asks examiners to walk through the four Graham factors as part of its analysis, including the requirement of analogous art and evidence showing a motivation to combine/modify.
However, a few open questions remain that the USPTO will need to grapple with as it applies this new guidance. First is the unresolved question of how to determine if a reference outside the field of endeavor is analogous art. The “reasonably pertinent” prong of the analogous arts test seems difficult to apply in the design context, where the “problem” being solved is more ambiguous than in utility patents. The court and PTO left further development of this issue to future cases.  Second, without the clear goalpost of a “basically the same” primary reference, there may be a wider range of potential primary references and more uncertainty around whether a particular reference really is the “most similar.” Examiners will need to carefully explain their reasoning.
From a strategic perspective for design patent applicants and owners, this decision and the USPTO guidance will likely make obviousness rejections somewhat more common, and design patents somewhat harder to obtain and easier to invalidate. Without the “basically the same” requirement, examiners have more flexibility to combine references.