Design Patents Just Got EasierOctober 8, 2021

In a short, four page, precedential opinion issued on October 4, 2021, the United States Court of Appeals for the Federal Circuit held that design patents are limited to specific articles of  manufacture, and not a design in the abstract. In re Surgisil, L.L.P., case number 2020-1940.

The patent applicant, Surgisil, filed a design patent application for a lip implant.  The application was unusual in that it only had one figure to depict the lip implant:

The Patent Office examiner rejected the Surgisel application as being anticipated by a prior art tool, called a stump, used by artists to smooth and blend pastel and charcoal drawings.  The stump looked  similar to the lip implant of the application:

The Applicant appealed the examiner’s rejection to the Patent Office Trial and Appeal Board, which affirmed the examiner, stating that the differences between the lip implant and the art stump were minor.  Then Surgisil appealed to the Federal Circuit.

The Court reversed the PTAB, which had erred as a matter of law.  The Court noted that the patent statute 35 U.S.C. 171(a) permits a design patent for new, original and ornamental design of an article of manufacture, citing the 1871 Supreme Court case of Gorham Co. v. White, 81 U.S. 511.  The Court thus reasoned that a design claim is limited to the article of manufacture recited in the claim.  The Patent Office Manual of Patent Examination Procedure, Section 1502, is consistent, with this conclusion, stating that a “design is inseparable from the article to which it is applied and cannot exist alone.”

Since a lip implant and an art tool are not the same article of manufacture, the stump did not anticipate the lip implant design, and the Court reversed the Patent Board.

The practical effect of this decision is that design applications may be easier to get allowed, since an examiner cannot merely reject the application by finding some other object that looks like the drawings of the design application.  Non-analogous art cannot defeat the design application.  Therefore, if the design is new, original, and ornamental to a specific article of manufacture, it should be patentable, even if similar designs exist for other unrelated articles.

Kirk Hartung is a member of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at

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