Board design patent anticipation decision reversed as prior art is to an art tool while design patent claim is “limited to lip implants”

In Re:  Surigisil, LLP et al.

Docket No. 2020-1940 (https://cafc.uscourts.gov/opinions-orders/20-1940.OPINION.10-4-2021_1843781.pdf)

MOORE, NEWMAN, O’MALLEY

October 4, 2021

Brief Summary:  Board decision finding design patent claim anticipated by art tool prior art reversed (e.g., “the claim is limited to lip implants and does not cover other articles of manufacture”). Summary:  Surgisil appealed USPTO Board decision affirming an examiner’s rejection of its design patent application (29/491,550) to a lip implant as anticipated by a Blick art tool “‘made of “tightly spiral-wound, soft gray paper’ and is used ‘for smoothing and blending large areas of pastel or charcoal.’”  Surgisil’s “claim language recites ‘a lip implant’” and it argued “that Blick could not anticipate because it disclosed a “very different” article of manufacture than a lip implant.”  The Board disagreed, finding it to be “appropriate to ignore the identification of the article of manufacture in the claim language” and explaining “that ‘whether a reference is analogous art is irrelevant to whether that reference anticipates.’”  The FC panel reviewed the Board’s legal conclusions “that the article of manufacture identified in the claim is not limiting” de novo (Redline, FC 2015), and found it to be erroneous.  The FC panel explained that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract”, and that “[h]ere, the claim identifies a lip implant”, “[t]he claim language recites ‘a lip implant’”, “the Board found that the application’s figure depicts a lip implant,” and “[a]s such, the claim is limited to lip implants and does not cover other articles of manufacture.”  In addition, the FC panel explained that “[t]here is no dispute that Blick discloses an art tool rather than a lip implant” and “[t]he Board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope.”  The Board’s decision was therefore reversed.

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