In the second step of the obviousness analysis, the court or examiner may modify the primary reference using secondary references to create a design that has the same overall visual appearance as the claimed design.
Benson for the premise that claimed methods designed for use on a computer may nonetheless be patent-ineligible if they can also be performed without a computer. stating that the asserted claims did not contain any technical solution, technical advance or improvement, as did the claims in the aforementioned cases.
The design in this patent is different from that of the earlier applications in that the new claim includes a front surface entirely covered with a translucent black surface without color contrast and excludes the surface within the round home button while including the entire capsule-shaped speaker opening. 112, first paragraph, needed to claim benefit under 35 U. These two references qualify as prior art as of the date they were filed under pre-AIA 35 U. The ‘204 design patent was also used to support a pre-AIA 102(e) rejection based on the fact that the appearance of the planar front surface of the ‘204 design patent is substantially the same as that of the patented design.
Therefore the claim in this patent does not satisfy the written description requirement of 35 U. In the first obviousness rejection the examiner used U. Design Patent D546,313 in view of either WO 2006/038499 or Japanese Patent JPD1235888.
rehearing at the Federal Circuit, 2010) In its March 9, 2010 decision, the Federal Circuit held that design patent infringement should focus only on ornamental aspects of the patented design. On appeal, the Federal Circuit affirmed that Arizona district court properly “factored out” functional elements during the claim construction process and that the ornamental features of the patented design (upper right) were not similar-enough to the ornamental features of the Stanley Works FUBAR (lower right).
507167 covers a multi-function carpentry tool (a FUBAR).
The court or examiner must verbally describe the design so that the parties and appellate courts can understand the court’s or examiner’s reasoning in identifying the primary reference.
Here, the district court found the Eagles jersey to be the primary reference. While the district court in did not explicitly translate the claimed design into a verbal description, the Federal Circuit held that the district court did identify similarities and differences between the ’488 patent and the Eagles jersey to convey what the district court considered to be the relevant design characteristics of the ’488 patent, and why it chose the Eagles jersey as the primary reference.When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.A design is considered functional if it is dictated by the way it works or operates.They may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or to a combination of the two.Ultimately, a design patent protects only the appearance of the article and not its structure or functionality.Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the center of their never-ending patent battle with Samsung. Many of the news accounts incorrectly state that the Apple design patent has been invalidated. Apple will have an opportunity to respond to this USPTO action.