Page 10 - The Katten Kattwalk - Fall 2024 - Issue 28

Stating the Obvious
The Federal Circuit overturned its 42-year-old obviousness test
for designs. Fashion companies, take note.
By Julia L. Mazur
T he shape of a handbag, the red sole of a shoe:
for fashion companies, design patents have
long played a role in brand protection efforts.
To file a design patent application, however,
a company must identify some part of an article that
is new, original, ornamental and non-obvious — and
now, the legal test for non-obviousness has changed.
In May, the US Court of Appeals for the Federal
Circuit overruled its longstanding test for determining
whether a design claimed in a design patent or
application is obvious and therefore not patentable
under Section 103 of the Patent Act. In its place, the
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Federal Circuit adopted a more flexible test meant
to better align with the Patent Act, Supreme Court
precedent and the obviousness test used to analyze
inventions claimed in utility patents or applications.
Under the prior Rosen-Durling test for obviousness,
a challenging party seeking to prove a design was
obvious (and therefore ineligible for protection) had
to first show that a single piece of prior art had design
characteristics that were “basically the same as the
claimed design” (i.e., a Rosen reference). If there was
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no Rosen reference, the obviousness inquiry ended.
If a Rosen reference was identified, the challenger
could argue that designs in other references could
be used “to create a design that has the same overall
visual appearance as the claimed design,” but only if
they were “so related” to the Rosen reference that “the
appearance of certain ornamental features in one would
suggest the application of those features to the other.”
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The Federal Circuit, en banc, found that this test
was inflexible and inconsistent with Supreme Court
precedent. For example, in Smith v. Whitman Saddle
Co., the Court found a horse saddle design obvious
because “[n]othing more was done” than to combine
the front half of one saddle with the back half of
another “in the exercise of the ordinary skill of
10 katten.com/fashionlaw
workmen of the trade, and in the way and manner
ordinarily done.” More recently, the Supreme Court
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reiterated the need for caution in granting a patent
based on a combination of elements found in the
prior art, but rejected rigid, mandatory formulas that
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prevent fact finders from applying common sense.
Now, finders of fact should generally apply the “fact-
based non-rigid test” established in Graham v. John
Deere Co. of Kansas City, which analyzes whether
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an invention claimed in utility patents or applications
is obvious to determine whether related designs are
obvious. LKQ Corp., 102 4th at 1301. The Graham test
has four factors.
Step one: Evaluate the “‘scope and content of
the prior art’ within the knowledge of an ordinary
designer in the field of design.” The primary piece of
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prior art no longer needs to be “basically the same”
as the design at issue. However, the prior art must
be “analogous art” to protect against the benefit
of hindsight. The Federal Circuit did not overrule
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precedent for determining analogous art, but left
open whether prior art from a different field than the
design at issue could be analogous art.
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Step two: Assess the visual differences between the
prior art designs and the claimed design from the
perspective “of an ordinary designer in the field of the
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article of manufacture.”
Step three: Determine the knowledge or level of skill
of an ordinary designer who designs articles of the
type presented in the patent or patent application. 11
Step four: Analyze whether the design is obvious or
non-obvious, focusing on the visual impression of the
claimed design as a whole. If a primary reference
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does not render the design obvious, other references
can be considered. They need not be “so related,”
and the motivation to combine them to create the