In our previous article, we looked at how a patent professional performs an obviousness analysis and some potential arguments a patent applicant might use when faced with an obvious rejection under Section 103. In this blog post, we’ll look at how this obviousness concept applies in the case of design patents.

Understanding how an Examiner will evaluate a design patent application can provide valuable insight for developing an effective patent strategy for novel ornamental designs and configurations.

As with conventional utility patent applications, obviousness inquiry under section 103 can be the most challenging part of the process. Utility and novelty are easier to show. On the other hand, “obviousness” is quite subjective to the person making the decision. The inquiry is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

First, the Examiner will identify design characteristics which are basically the same as the claimed design, using this as “his primary reference”. Then, the Examiner will identify “secondary references” that contain design features that can be used to modify the primary reference. The combination will, according to the Examiner, have the overall visual appearance as the claimed design. Then, the Examiner will determine whether one of ordinary skill in the art would have combined these features from the primary and secondary references to come up with the claimed combination in the patent application.

Would the design features have been taught or suggested by the prior art (existing technology at the time the patent application was filed)? Would the designer of ordinary skill in that field have been motivated to modify the primary reference design by deleting, adding or interchanging the features from the secondary reference? Are the references so related that the appearance of ornamental features in one would suggest the application of those features on the other? If the answer to any of these inquires is in the negative, a patent applicant can create a responsive argument to defend against a Section 103 obviousness rejection in a design patent application. The good news, 90% of design patent applications are granted.