An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board (PTAB).

In a decision mailed September 29, 2022, a panel of three PTAB administrative patent judges reversed an Examiner’s final rejection based on the design “disclosed in the specific view” of a utility patent figure, notwithstanding the appearance of the entire functional article of manufacture disclosed therein.

The claim on appeal is for the ornamental design for a Short Garment as shown and described.

An apparent commercial embodiment from Skims is its Solution Short styles, designed as a sculpting solution for high-slit skirts.                                 

On appeal, the claim stood rejected under 35 U.S.C. § 102(a)(2) as anticipated by Figure 7 of U.S. utility patent number 3,547,128 to Keltner.

The Examiner contended that 35 U.S.C. §102 does not require that the reference show “the complete and intended design” and that the cited figure “discloses a garment that extends from the hip down to the thigh on one side and cutoff at an angle on the other side, as is claimed in the present application.”  The Examiner argued that because a design may be embodied in less than an entire article, the Examiner can rely on less than the entire prior art article, and that language in a utility patent reference is of no concern when comparing the ornamental design appearance of two articles of manufacture.

The Appellant disagreed, arguing that it is “improper to extract from any one reference only so much of it as will support a given position and to exclude other parts necessary to a full appreciation of what the reference fairly suggests as a whole to one of ordinary skill in the art.”

The PTAB sided with Appellant, noting that relying on less than the entire prior art article may be appropriate when an applicant has chosen to claim only a portion of the article of manufacture in which its design is embodied, but not when the claim is directed to an entire article of manufacture.  Although the appearance of the cited view is at least similar to the appearance of the claimed design, the PTAB declined to consider the cited figure in isolation, noting its description as a fragmentary view.

The PTAB noted that Keltner also discloses that its stocking units are “worn over bare skin from the waist to the feet” and that a skilled artisan considering Keltner’s right stocking unit 110a as a whole would understand that its design includes a hose section 114a that extends all the way to the feet.

The PTAB concluded that it is this full prior art design that must be compared with Appellant’s claim to the entire article of manufacture and reversed the Examiners rejection, paving the way for issuance of D973,307.

The USPTO reports Receipts and Dispositions by Technology Center. For fiscal year 2022, the PTAB received 39 new appeals from Tech Center 2900 for designs, decided design 50 appeals, affirming 32 (64%), reversing 18 (36%), leaving 35 pending. The current 3-month average pendency of design appeals from PTAB receipt to final decision is 11.3 months, down from 12.1 from the previous year period, November – January.

For more information about design patent appeals, contact the author below:

George Raynal, Principal

george.raynal@designlawgroup.com

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