Appeal No.

2020-1940
_____________________________________________________________

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
__________________________________

In re: SURGISIL, L.L.P., PETER RAPHAEL, SCOTT HARRIS,

Appellants.
_____________________________________________________________

Appeal from the United States Patent and Trademark Office,

Patent Trial and Appeal Board in Application No. 29/491,550
_____________________________________________________________

BRIEF FOR APPELLEE– DIRECTOR OF THE

UNITED STATES PATENT AND TRADEMARK OFFICE

THOMAS W. KRAUSE
Solicitor

AMY J. NELSON
Senior Counsel for Patent
Policy and Litigation

MARY L. KELLY
WILLIAM LAMARCA
Associate Solicitors

Mail Stop 8, P.O. Box 1450

Alexandria, VA 22313-1450
(571) 272-9035

Attorneys for the Director of

the United States Patent and
February 18, 2021 Trademark Office
 Design Claim on Appeal

The ornamental design for a LIP IMPLANT as shown and described.

(Appx20.)
 TABLE OF CONTENTS

Page

I. STATEMENT OF THE ISSUES 1

II. STATEMENT OF THE CASE 1

III. STATEMENT OF THE FACTS 2

A. The claimed design for a lip implant 2

B. Blick’s design for a paper stump 3

C. The Board’s decision 3

IV. SUMMARY OF THE ARGUMENT 7

V. ARGUMENT 11

A. Standard of review 11

B. Substantial evidence supports the Board’s finding that Blick’s stump

design anticipates the claimed implant design 12

C. The Court should deny SurgiSil’s request for relief under Curver 17

1. Curver does not mandate consideration of the non-ornamental features

of a claimed design’s article of manufacture 18

2. The Court should not extend the holding of Curver beyond the
infringement context 22

3. The Courts have never required analogous articles of manufacture as a

prerequisite to design patent anticipation 24

a. There is no analogous art requirement for anticipation in utility or

design patent law 24
 Page
b. Gorham and Egyptian Goddess did not create an analogous art
requirement for anticipation in design patent cases 26

c. SurgiSil has not shown that design patent overreaching is likely to

occur if the intended uses of articles of manufacture are not
considered during the examination of design patent claims for
novelty 28

4. The Court should not extend the Curver holding beyond design patent
claims directed to surface ornamentation 34

VI. CONCLUSION 35

ii
 TABLE OF AUTHORITIES

Page(s)
Cases
Abbott Labs. v. Sandoz, Inc.,
566 F.3d 1282 (Fed. Cir. 2009) ..........................................................................23
Baxter Int’l, Inc., In re,
678 F.3d 1357 (Fed. Cir. 2012) ..........................................................................15
Consol. Edison Co. v. NLRB,
305 U.S. 197 (1938)…………………………………………………………...11

Crescent Tool Co. v. Kilborn & Bishop Co.,

247 F. 299 (2d Cir. 1917) ...................................................................................18
Curver Luxembourg v. Home Expressions Inc.,
938 F.3d 1334 (Fed. Cir. 2019) ...................................................................passim
Deckers Corp. v. United States,
752 F.3d 949 (Fed. Cir. 2014) ...................................................................... 21-22
Dickinson v. Zurko,
527 U.S. 150 (1999) ............................................................................................23

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) .....................................................................passim
Gartside, In re,
203 F.3d 1305 (Fed. Cir. 2000)………………………………………………..11
Glavas, In re,
230 F.2d 447 (CCPA 1956) .......................................................................... 25-26

Gleave, In re,
560 F.3d 1331 (Fed. Cir. 2009)………………………………………………..11
Gorham Co. v. White,
81 U.S. 511 (1871) .......................................................................................passim

iii
Int’l Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009)………………………………...3, 12, 13, 14, 27

Jolley, In re,
308 F.3d 1317 (Fed. Cir. 2002) ....................................................................12, 15

Kellman v. Coca-Cola Co.,

280 F. Supp. 2d 670 (E.D. Mich. 2003) ......................................................passim

L.A. Gear Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993) ........................................................20, 21, 23, 35

Microsoft Corp. v. i4i Ltd. P’ship,

564 U.S. 91 (2011) ..............................................................................................23

Morsa, In re,
713 F.3d 104 (Fed. Cir. 2013) ......................................................................11, 23
OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) ........................................................15, 20, 21, 35
Peters v. Active Mfg. Co.,
129 U.S. 530 (1889)…………………………………………………………...22
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................23
PS Products Inc. v. Activision Blizzard, Inc.,
140 F. Supp. 3d 795 (E.D. Ark. 2014)........................................ 28-29, 30, 32, 33
Sadacca, In re,
56 F.2d 1085 (CCPA 1932). .........................................................................25, 35

Samsung Elecs. Co., Ltd. v. Apple Inc.,

137 S. Ct. 429 (2016) ....................................................................................20, 27
Schreiber, In re,
128 F.3d 1473 (Fed. Cir. 1997) ......................................................................7, 25
Stepan Co., In re,
868 F.3d 1342 (Fed. Cir. 2017) ....................................................................16, 17

iv
Thorpe, In re,
777 F.2d 695 (Fed. Cir. 1985) ...................................................................... 23-24

Vigil v. Walt Disney Co.,

No. 3:97-cv-4147, 1998 U.S. Dist. LEXIS 22853
(N.D. Cal. Dec. 1, 1998) ...................................................................28, 29, 30, 33
Watts, In re,
354 F.3d 1362 (Fed. Cir. 2004) ..........................................................................11
Zahn, In re,
617 F.2d 261 (CCPA 1980) ....................................................................20, 21, 35

Statutes
35 U.S.C. § 102(b) .................................................................................................2, 3
35 U.S.C. § 171 ..............................................................................................9, 24, 27
35 U.S.C. § 171(b) ...................................................................................................24

35 U.S.C. § 282 ........................................................................................................23

35 U.S.C. § 289 ........................................................................................................20
Trademark Act of Aug. 14, 1876, ch. 274, 19 Stat. 141
(Aug. 14, 1876) ...................................................................................................18

Design Patent Act of Aug. 29, 1842, 5 Stat. 543, 543-44

(Aug. 29, 1842) ...................................................................................................19
Copyright Act of 1831, ch. 16, 4 Stat. 436 § 1 (1831) ............................................18

Patent Act of 1836, ch. 357, 5 Stat. 117 § 6 (1836).................................................18

Other Authorities
H.R. Doc No. 27-169 (1841) ...................................................................................18

Jason J. Du Mont and Mark D. Janis, The Origins of American Design

Patent Protection, 88 Indiana L.J. 837 (2013) .......................................18, 19, 24

v
Thomas B. Hudson, A Brief History of the Development of Design
Patent Protection in the United States, 3:5 J. Pat. Off. Soc’y 380
(1948) ..................................................................................................................18
1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 7:62 (4th ed. 2009)…………………………………………………………..18
MPEP § 1502.01 ........................................................................................................6

MPEP § 1504.02 ......................................................................................................25

vi
 STATEMENT OF RELATED CASES

SurgiSil, L.L.P., (“SurgiSil”) seeks relief from the final decision of the

Patent Trial and Appeal Board (“Board”) of the U.S. Patent and Trademark Office

(“USPTO”) in the examination of design patent application, U.S. Serial

No. 29/491,550 (“the ’550 application”). To the Director’s knowledge, there are

no other appeals pending before this Court or any other court that will affect or be

directly affected by a decision in this appeal.

vii
 I. STATEMENT OF THE ISSUES

SurgiSil seeks reversal of a Board decision holding its claim to a design for a

lip implant anticipated by Blick’s design for a paper “stump,” i.e., an artist’s tool

used for blending pastels and charcoals. Both designs have a cylindrical shape

with conical ends. Applying the ordinary observer test of Egyptian Goddess, the

Board found that the claimed design has substantially the same appearance as

Blick’s paper stump. The Board also found that SurgiSil cannot distinguish the

claimed design from Blick’s stump design based on non-ornamental features

(e.g., the intended uses) of the articles of manufacture embracing these designs.

SurgiSil’s opening brief raises two issues:

(1) Whether substantial evidence supports the Board’s finding that the

claimed design has substantially the same appearance as Blick’s stump

design; and

(2) Whether and to what extent the Court’s recent decision in Curver allows

non-ornamental differences in the articles of manufacture embracing a

claimed design and a prior art design to be considered in the anticipation

analysis.

II. STATEMENT OF THE CASE

SurgiSil is the assignee of the ’550 application. (Appx1.) The Board

affirmed the Examiner’s rejection of the design claimed in the ’550 application as
anticipated under 35 U.S.C. § 102(b) by the design for a paper stump disclosed in a

Dick Blick® art supply catalogue (Appx182-183; “Blick”). (Appx2.) SurgiSil

appealed the Board’s decision to this Court.

III. STATEMENT OF THE FACTS

A. The claimed design for a lip implant

The ’550 application claims a design “for a LIP IMPLANT.” (Appx19.)

The sole figure of the design is copied below:

(Appx20.) As illustrated, the design consists of a cylinder with conical ends that

terminate to a planar surface at each end.

2
B. Blick’s paper stump design

Blick discloses a paper art stump. Art stumps are used for smoothing and

blending large areas of pastel or charcoal. 1 As shown below, Blick’s stump design

consists of a cylinder with conical ends that terminate in a point2:

(Appx182.)

C. The Board’s decision

The Board affirmed the Examiner’s rejection of the claimed design as

anticipated under 35 U.S.C. § 102(b) by Blick’s stump design. In particular, the

Board agreed with the Examiner that both designs consist of a cylinder with

conical ends. (Appx2 (citing Appx83).) The Board also agreed with the Examiner

that an ordinary observer would view the claimed design as having substantially

the same appearance as Blick’s design. (Appx2 (citing Appx122-123); Appx122-

123 (citing lnt’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-

38 (Fed. Cir. 2009)).)

1
“Stump (noun): a short thick roll of leather, felt, or paper usually pointed at both
ends and used for shading or blending a drawing in crayon, pencil, charcoal, pastel,
or chalk.” Merriam-Webster Online Dictionary, https://www.merriam-
webster.com/dictionary/stump (last visited Feb. 18, 2021).
2
There is no dispute that both ends of the stump in the Blick catalog terminate at a
point, and that the point on the left-end in this reproduction is missing.
3
 The Board was unswayed by SurgiSil’s attempts to distinguish the claimed

design from Blick’s design based on alleged anticipation-defeating differences in

their ends and textures. (Appx2; see also Appx109.) First, the Board found little

merit in SurgiSil’s argument that the ends of the claimed design have a “long and

thin frustoconical 3 shape,” whereas the ends of Blick’s design have a “short and fat

cone shape.” (Appx3 (quoting Appx110).) The Board also found little merit in

SurgiSil’s related – and somewhat overlapping – argument that the most distal end

portions of the claimed design terminate in a planar surface, whereas the most

distal end portions of Blick’s design terminate in a point. (Appx3 (citing

Appx111).) Rather, the Board compared the ends of both designs side-by-side, and

agreed with the Examiner that the asserted differences are only “minor . . . because

the overall appearance [of the claimed design] is basically the same as the prior

art.” (Appx3 (citing Appx124).) The Board also agreed with the Examiner that

SurgiSil had failed to explain why these differences are anything other than minor

differences that do not prevent a finding of anticipation by Blick. (Appx3-5.)

3
“Frustoconical (adjective): of the shape of a frustum of a cone.” Merriam-
Webster Online Dictionary, https://www.merriam-
webster.com/dictionary/frustoconical (last visited Feb. 18, 2021). “Frustum
(noun): the basal part of a solid cone or pyramid formed by cutting off the top by a
plane parallel to the base.” See Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/frustum (last visited Feb. 18, 2021).
4
 Second, the Board was unswayed by SurgiSil’s argument that the claimed

design and Blick’s stump design have distinct textures. (Appx4.) More

specifically, SurgiSil argued that the claimed design has a smooth surface, whereas

Blick “‘communicates some degree of roughness [of] the exterior surface.’”

(Appx4 (quoting Appx112).) The Board disagreed, finding instead that “Blick

illustrates a smooth surface for its stump.” (Appx4; Appx125.) As such, the Board

could “discern no difference in surface texture between the claimed design and

Blick.” (Appx4.) Accordingly, the Board found that SurgiSil’s arguments based

on end shapes and surface textures did not refute its anticipation finding. (Appx4-

5.)

Lastly, the Board rejected SurgiSil’s argument that Blick’s design cannot

anticipate the claimed design because of alleged “vast differences” in the function

of their underlying articles of manufacture. (Appx133-134 (citing Curver

Luxembourg v. Home Expressions Inc., Civ. No. 2:17- CV-4079-KM-JBC, 2018

WL 340036 at 9 (D.N.J. Jan. 8, 2018), aff’d Curver Luxembourg v. Home

Expressions Inc., 938 F.3d 1334, 1339 (Fed. Cir. 2019)).) In making this

argument, SurgiSil first relied on the District Court’s and eventually this Court’s4

finding in Curver that a claim to a design applied to a specific article of

4
The Court’s opinion in Curver issued after briefing before the Board had
concluded, but prior to oral argument before the Board. (See Appx10.)
5
manufacture was not infringed by the same design applied to a different article of

manufacture. (Appx133; see also Appx6.)

The Board began by distinguishing the facts in Curver from those presented

here. In particular, the Board observed that Curver concerned an “‘atypical

situation’” where the patent drawings failed to depict the article of manufacture

recited in the patentee’s claim, leading the Court to conclude that “the language in

a design patent claim ‘can limit the scope of a design patent where the claim

language supplies the only instance of an article of manufacture that appears

nowhere in the figures.’” (Appx6 (quoting Curver, 938 F.3d at 1340).) The Board

found in contrast that SurgiSil’s application drawing depicts the entire article of

manufacture encompassed by the claimed design. (Appx7.) Accordingly, the

Board concluded that the claimed design is not limited by Curver to the article of

manufacture identified in SurgiSil’s claim. Id.

The Board also found Curver non-limiting based on the nature of the

claimed design. More specifically, the Board noted that a design patent claim may

be directed to an ornamental design for (1) surface ornamentation applied to an

article of manufacture, (2) an article or manufacture’s shape/configuration, or (3) a

combination of both. (Appx6 (citing MPEP § 1502.01).) The Board then found

that the design in Curver was for “a planar region of a panel-like member

disembodied from any particular article of manufacture, which is most comparable

6
to a surface ornamentation,” whereas SurgiSil’s design is for the shape of an article

of manufacture. (Appx6.) The Board further found that, where the claimed design

is for the shape of an article of manufacture, the application drawing necessarily

“fully defines” the claimed design. (Appx7.) Accordingly, the Board determined

that “the fact that Blick is directed to an art supply stump, rather than a lip implant,

is irrelevant to whether Blick anticipates the claimed design.” Id.

The Board also agreed with the Examiner that SurgiSil cannot distinguish

the claimed lip implant design from Blick’s stump design based on the intended

uses of their underlying articles of manufacture because “it has long been

established that ‘the question whether a reference is analogous art is irrelevant to

whether that reference anticipates.’” (Appx7 (quoting In re Schreiber, 128 F.3d

1473, 1478 (Fed. Cir. 1997)).) The Board further noted that none of the district

court holdings cited by SurgiSil in further support of this argument is binding on it.

(Appx6 (citing Appx132-135).)

For all these reasons, the Board affirmed the Examiner’s anticipation

rejection. (Appx7-8.)

IV. SUMMARY OF THE ARGUMENT

Substantial evidence supports the Board’s finding that SurgiSil’s claim to a

design for a lip implant is anticipated by Blick’s nearly identical design for a paper

stump. Under the “ordinary observer” test of Egyptian Goddess, a design patent

7
claim is anticipated and/or infringed by a design having the same or substantially

the same overall appearance. SurgiSil’s implant design and Blick’s stump design

both have long cylindrical bodies with conical ends. While the ends of these

designs have slightly different taper angles and termination points, the Board found

these differences insignificant. Accordingly, the Board found that an ordinary

observer would view the two designs as having substantially the same visual

appearance, and that Blick’s stump design anticipated SurgiSil’s implant design.

SurgiSil argues that Blick’s design cannot anticipate the claimed design

based on differences in the intended uses of the articles of manufacture embraced

by those designs. According to SurgiSil, these differences must be considered

under the holding of Curver, a case in which the Court considered the overall

visual appearance of a claimed and an accused design as applied to their respective

articles of manufacture while conducting its infringement analysis. There are at

least four problems with SurgiSil’s argument.

First, design patent claims protect ornamental designs for articles of

manufacture, not non-ornamental features of their underlying articles of

manufacture such as intended use. The courts have consistently held that the non-

ornamental features of an article of manufacture are not part of a design patent

claim, and are not to be considered during the examination of design patent claims

for novelty. Curver did not alter these precedents. Although the Court considered

8
the overall visual impression of the claimed and accused designs taken in

combination with their respective articles of manufacture, the Curver decision

never mentions or discusses the functions of the articles of manufacture in that case

(i.e., a chair and a small basket). Thus, nothing in Curver upsets longstanding

precedent that the non-ornamental features of an article of manufacture remain

irrelevant to the anticipation of design patent claims.

Second, ample binding precedent supports not extending the reach of the

Court’s holding in Curver to require the consideration of intended use in the

examination of design patent claims. According to SurgiSil, Curver must apply to

the anticipation analysis under the maxim that which infringes later anticipates if

earlier. There are several important distinctions between infringement litigation

and patent examination that demonstrate why the converse of this nutshell is not

true. For example, because design patent claims are construed more broadly

during patent examination, a design that might not infringe a claim if later, might

anticipate the same claim if earlier. In addition, because design patent claims carry

no presumption of validity during patent prosecution, they may be shown

unpatentable by a smaller quantum of evidence than would be necessary to

invalidate the same claim during infringement litigation. Indeed, this Court has

recognized that differences in the standards used during the anticipation and

infringement analyses can lead to very different outcomes.

9
 Third, there is no analogous art requirement for design patent anticipation.

Section 171 provides that design patent claims are to be examined the same way as

utility patent claims except as otherwise provided. It is well established in utility

patent law that there is no analogous art requirement for anticipation. A corollary

rule exists in design patent law that there is no analogous article of manufacture for

design patent claim anticipation. Moreover, there is no support for SurgiSil’s

argument that the discussion of consumer mistake and deception in Gorham and

Egyptian Goddess imposes an analogous art requirement in design patent law.

While evidence of mistake and deception may be helpful in establishing

infringement and/or damages, the courts have never held that proof of consumer

mistake and deception are necessary elements of the ordinary observer test. Thus,

Gorham and Egyptian Goddess do not mandate consideration of the claimed and

accused or prior art designs’ articles of manufacture during application of the

ordinary observer test – and they certainly do not create an analogous art

requirement in design patent law. There is also no support for SurgiSil’s argument

that failure to impose an analogous art requirement in design patent law will lead

to patentee overreaching. Each of the district court cases SurgiSil cites as support

is non-binding and inapt. Specifically, the claimed and accused designs in these

cases– not just their respective articles of manufacture – were objectively

10
dissimilar. Thus, these cases do not establish that design patentees will broadly

assert their claims without an analogous art requirement to keep them in check.

Fourth, this Court should not extend the Curver holding to design patent

claims directed to the shape or configuration of an article of manufacture. The

reasons the Court considered the claimed and accused designs in combination with

their articles of manufacture in Curver remain somewhat elusive. However, even

assuming that there are times when it might be necessary or useful for the ordinary

observer to view a design for surface ornamentation in combination with an article

of manufacture, no such need exists with designs for the shape or configuration of

an article of manufacture. Simply put, the overall visual appearance of the claimed

design and the article of manufacture are one and the same, and there is no need to

consider any other aspect of the article of manufacture.

V. ARGUMENT

A. Standard of review

SurgiSil has the burden of showing that the Board committed reversible

error. In re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004).

“Anticipation is a question of fact reviewed for substantial evidence.” In re

Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (citing In re Gleave, 560 F.3d 1331,

1334-35 (Fed. Cir. 2009)).

11
 This Court has defined substantial evidence as that which “‘a reasonable

mind might accept as adequate to support a conclusion.’” In re Gartside, 203 F.3d

1305, 1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. v. NLRB, 305 U.S. 197,

229-30 (1938)). “[W]here two different, inconsistent conclusions may reasonably

be drawn from the evidence in record, an agency’s decision to favor one

conclusion over the other is the epitome of a decision that must be sustained upon

review for substantial evidence.” In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.

2002).

B. Substantial evidence supports the Board’s finding that Blick’s stump

design anticipates the claimed implant design

A design claim is anticipated by a prior art design when an ordinary observer

would view the two designs, taken as a whole, to be “substantially the same.”

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (citing

Gorham Co. v. White, 81 U.S. 511, 526-27 (1871)); see also Int’l Seaway Trading

Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009). This

“comparison tak[es] into account significant differences between the two designs,

not minor or trivial differences that necessarily exist between any two designs that

are not exact copies of one another.” Int’l Seaway, 589 F.3d at 1243. “[M]inor

variations . . . are insufficient to preclude a finding of anticipation” when “they do

not change the overall visual impression” of a design. Id.

12
 Using this approach, the Board correctly found that Blick’s paper stump

design anticipates the claimed design. As shown below, SurgiSil claims a design

for a lip implant having a cylindrical shape with conical ends that terminate in a

flat surface, while Blick discloses a design for a paper stump having a cylindrical

shape with conical ends that terminate in a point:

(Appx20, Appx182.) After comparing the two designs, the Board found that they

have substantially the same overall appearance, despite the minor differences in

end tapering and tip shape identified by SurgiSil, and they have no difference in

texture. (Appx3-5.)

SurgiSil relies on these same distinctions in its opening brief in an attempt to

establish reversible error. (Br. at 32-37.) There are two problems with this

approach. First, when conducting an anticipation analysis, a tribunal is permitted

to disregard minor differences between the claimed design and the prior art that do

13
not affect the overall appearance of the two designs. Int’l Seaway, 589 F.3d at

1243. Thus, SurgiSil cannot establish legal error in the Board’s analysis on this

basis.

Second, SurgiSil cannot demonstrate that the Board’s fact-finding was

unreasonable. For example, in International Seaway, this Court found design

patent claims for casual, lightweight clogs anticipated by a prior art clog design

even though the designs differed in “(1) the number and arrangement of the

circular openings on the upper of the clog; (2) the number and position of the

rectangular cut-outs in the lower portion of the upper of the clog; (3) the shape of

the toe portion of the clog; and (4) the raised pattern of the outsole of the clog.” Id.

at 1243. Ultimately, the Court found that these features were “minor variations in

the shoe [that] are insufficient to preclude a finding of anticipation because they do

not change the overall visual impression of the shoe.” Id.

Like the features at issue in International Seaway, SurgiSil’s arguments are

based on “minor variations” that do not affect the overall visual impression of the

claimed and prior art designs. In particular, SurgiSil points to alleged differences

in termination point, taper angle, and texture to argue against anticipation – i.e., the

same differences found insubstantial or nonexistent by the Board. (See Br. at 32-

37; Appx2-5.) These differences are objectively fewer in number and less

significant than those at issue in International Seaway, and yet this Court still

14
affirmed the District Court’s finding of anticipation in that case. Int’l Seaway, 589

F.3d at 1242. Moreover, as the Board correctly found, SurgiSil has not explained

why millimeter differences in end taper degree and tip shape “are other than minor

differences that do not prevent a finding of anticipation by Blick.” (Appx5.)

Accordingly, the Board’s fact-findings are reasonable and consistent with this

Court’s precedent, and SurgiSil has failed to establish reversible error in the

Board’s anticipation determination on these bases. Jolley, 308 F.3d at 1329.

SurgiSil makes two new, but equally unavailing arguments in its opening

brief. First, SurgiSil argues that the Board failed to consider “the significant

difference in size between the Blick art tool and the claimed lip implant.” (Br. at

33.) SurgiSil waived this argument by failing to raise it to the Board. See In re

Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012); see also Br. to PTAB

(Appx110-113), Reply to PTAB (Appx132-135). Even if unwaived, however, this

argument would still fail because nothing in the record suggests that the size of the

claimed lip implant design is substantially ornamental and, thus, capable of

distinguishing the claimed design from Blick’s paper stump design. In the absence

of such evidence, the alleged differences in size appear to be a function of the

intended uses of their underlying articles of manufacture. In order to function as

intended, a lip implant needs to fit in a human lip and a paper stump needs to fit in

a human hand. Unfortunately for SurgiSil, non-ornamental differences like these

15
are not part of a design patent claim, and cannot be used to distinguish a claimed

design from an anticipatory prior art design. See, e.g., OddzOn Prods., Inc. v. Just

Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (holding that a design patent’s

scope is limited to its ornamental elements when the design includes both

ornamental and non-ornamental elements).

Second, SurgiSil complains that the Board “cited no evidence and provided

no explanation to support its factual finding that the Blick art tool has a smooth

surface.” (Br. at 36.) It is unclear what quantum of evidence SurgiSil believes is

required. The relevant inquiry here is whether the claimed and prior art designs

have substantially the same appearance to an ordinary observer. Egyptian

Goddess, 543 F.3d at 670. This involves looking at and comparing the two

designs, which is exactly what the Board did here. After agreeing with SurgiSil

that the claimed design has a smooth texture, the Board agreed with the Examiner

that “the original color scan of Blick ‘shows the Stump to have a smooth texture.’”

(Appx4 (quoting Appx125).) In contrast to SurgiSil’s assertions (Br. at 36),

nothing more is required by the Court’s decision in In re Stepan Co., 868 F.3d

1342 (Fed. Cir. 2017).

In Stepan, this Court reversed an obviousness rejection of utility patent

claims to herbicidal formulations containing glyphosate salt and a surfactant

“having a cloud point above at least 70°C.” Id. at 1345. The Court found, inter

16
alia, that the Board failed to provide sufficient factual support for its finding that

“it would have been ‘routine optimization’ to select and adjust the claimed

surfactants and achieve a cloud point above at least 70°C.” Id. at 1346. However,

the level of exposition required to adequately explain why a person of ordinary

skill in the art would have been motivated to arrive at and eventually achieve a

specific cloud point for a complicated chemical formulation is orders of magnitude

greater than that required to support a finding that something looks smooth.

Accordingly, in contrast to SurgiSil’s assertions (Br. at 36), the Court’s decision in

Stepan does not compel remand here.

C. The Court should deny SurgiSil’s request for relief under Curver

Unable to distinguish the ornamental features of the claimed design from the

ornamental features of Blick’s design, SurgiSil seeks to distinguish its design from

the prior art based on non-ornamental features of the articles of manufacture

embracing these designs, i.e., their intended uses. According to SurgiSil, such a

result is compelled by the Court’s recent decision in Curver. (See Br. at 18-31.)

As explained more fully below, the Court should reject SurgiSil’s argument

because (1) Curver does not require consideration of the non-ornamental features

of an article of manufacture, such as intended use; (2) ample binding precedent

supports not extending the Curver rationale beyond the patent infringement

context; (3) there is no analogous art requirement for anticipation of design patent

17
claims; and (4) ample binding precedent supports not extending the Curver

rationale to the infringement or anticipation analysis of design patent claims for the

shape or configuration of an article of manufacture.

1. Curver does not mandate consideration of the non-ornamental

features of a claimed design’s article of manufacture

Before the first design patent law was enacted in 1842, there were no laws in

the United States for protecting ornamental designs applied to and embodied in

useful items. 5 Copyrights were limited by statute to books, maps, charts, musical

compositions, prints, cuts, or engravings. See Copyright Act of 1831, ch. 16, 4

Stat. 436 § 1 (1831) (“1831 Copyright Act”). Patents protected only new and

useful arts,6 machines, manufactures, compositions of matter, and improvements

thereon. See Patent Act of 1836, ch. 357, 5 Stat. 117 § 6 (1836) (“1836 Patent

Act”). The first federal trademark statute would not be enacted for another

28 years. See Act of Aug. 14, 1876, ch. 274, 19 Stat. 141 (“Trademark Act of

1876”). And, trade dress would not be recognized as applying to the configuration

5
For a detailed history of design patent law in the United States, see generally
Jason J. Du Mont and Mark D. Janis, The Origins of American Design Patent
Protection, 88 Indiana L.J. 837 (2013) (“Du Mont and Janis”); Thomas B. Hudson,
A Brief History of the Development of Design Patent Protection in the United
States, 3:5 J. Pat. Off. Soc’y 380 (1948) (“Hudson”).
6
At this time, the term “art” was not understood to mean designs, shapes or
configurations. See Ellsworth Report for 1841, H.R. Doc. No. 27-169, 2 (1841)
(recommending the protection of “new and original designs for articles of
manufacture, both in the fine and useful arts.” (emphasis added)).
18
of products for another five decades after that. See, e.g., 1 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 7:62 (4th ed. 2009)

(identifying Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (2d Cir. 1917),

a case concerning the shape of a crescent wrench, as the first true American

product design trade dress case).

Spurred on by the then-recent enactment of design laws in England, the

U.S. textile industry and manufacturers of cast-iron goods began to lobby for

protections for fabric pattern designs and the shape of goods like stoves, chairs,

kitchen utensils and bathtubs. See Du Mont and Janis, 88 Indiana L.J. at 848-863.

Unsurprisingly then, the first design patent law offered protection for, inter alia,

“any new and original impression or ornament . . . to be placed on any article of

manufacture,” and “any new and original shape or configuration of any article of

manufacture.” Act of Aug. 29, 1842, 5 Stat. 543, 543-44 (Aug. 29, 1842)

(hereinafter “1842 Design Patent Act”).

Importantly, while the 1842 Design Patent Act refers to a claimed design in

terms of an article of manufacture, nothing in the history of the 1842 Design Patent

Act indicates whether or to what extent the article of manufacture limits the scope

of the design patent claim. In particular, the terms “article” and “article of

manufacture” appear in only two sections of the 1842 Design Patent Act:

(1) “article of manufacture” appears in section 3 when defining design patent-

19
eligible subject matter, and (2) “article” appears in sections 5 and 6 when defining

design patent infringement remedies. Id. Thus, at the time the first design patent

laws were enacted, at least one purpose of defining design patent-eligible subject

matter in reference to an “article of manufacture” was to distinguish design patent-

eligible subject matter from copyrightable subject matter. Another purpose of

including the “article of manufacture” was much as it is today, i.e., a mechanism

used in assessing design patent infringement damages. See 35 U.S.C. § 289; see

also Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016) (interpreting the

meaning of “article of manufacture” for purposes of calculating design patent

infringement damages).

The other purposes served by the article of manufacture have remained

somewhat opaque since the passage of the 1842 Design Patent Act. While the

courts have repeatedly recognized that the scope of design patent protection

focuses on design patent drawings, see Curver, 938 F.3d at 1339, and cases therein

– drawings that almost always include a depiction of the article of manufacture in

whole or part – the courts have consistently held that design patent claims do not

include the non-ornamental features (e.g., intended uses) of the articles of

manufacture depicted in those drawings. See, e.g., In re Zahn, 617 F.2d 261, 268

(CCPA 1980) (“[35 U.S.C.] 171 refers, not to the design of an article, but to the

design for an article.”); L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,

20
1123 (Fed. Cir. 1993) (holding that a design must be “primarily ornamental” to be

patentable); OddzOn Prods., 122 F.3d at 1405 (holding that a design patent’s scope

is limited to its ornamental features when the design includes both ornamental and

non-ornamental features). Curver did not alter this landscape.

The essential facts of Curver are fairly straightforward: the owner of a

patent on a “pattern for a chair” brought an infringement suit against a

manufacturer of baskets incorporating the same surface pattern. Curver, 938 F.3d

at 1336. When applying the ordinary observer test of Egyptian Goddess, the Court

compared not only the appearance of the claimed and accused patterns, but also the

appearance of the patterns as applied to their respective articles of manufacture.

Id. at 1342-43. The Court then held that the accused product did not infringe the

claimed design because “no ‘ordinary observer’ could be deceived into purchasing

Home Expressions’s [sic] baskets believing they were the same as the patterned

chairs claimed in [Curver Luxembourg’s] patent.” Curver, 938 F.3d at 1343.

Although the Curver decision expressly rejects the notion that a design

patent claim for a surface ornamentation could ever “[exist] in the abstract such

that the patent’s scope encompasses every possible article of manufacture to which

the surface ornamentation is applied,” see id. at 1339, the Court never indicated

that its decision would in any way affect binding legal precedent holding that the

non-ornamental aspects of an article of manufacture are not part of the design

21
patent grant. See, e.g., Zahn, 617 F.2d at 268; L.A. Gear, 988 F.2d at 1123;

OddzOn Prods., 122 F.3d at 1405; see also Deckers Corp. v. United States, 752

F.3d 949, 959 (Fed. Cir. 2014) (“In this Circuit, a later panel is bound by the

determinations of a prior panel, unless relieved of that obligation by an en banc

order of the court or a decision of the Supreme Court”). Thus, Curver does not go

as far as SurgiSil would like.

2. The Court should not extend the holding of Curver beyond the
infringement context

SurgiSil argues that the Curver holding compels a finding that the claimed

design for a lip implant cannot be anticipated by a substantially similar design for a

different article of manufacture under the maxim “‘[t]hat which infringes, if later,

would anticipate, if earlier.’” (Br. at 18 (quoting Peters v. Active Mfg. Co., 129

U.S. 530, 537 (1889)).) According to SurgiSil, because infringement and

anticipation are both assessed using the ordinary observer test set forth in Egyptian

Goddess, and because the claimed lip implant design would not be infringed by

Blick’s paper stump design, it necessarily follows that Blick’s paper stump design

cannot anticipate the claimed lip implant design. (See Br. at 18-20.) Not true.

Even accepting SurgiSil’s premise that the claimed design would not be

infringed by designs for other types of articles of manufacture – given the

important distinctions between patent litigation and patent prosecution – it does not

necessarily follow that designs for other types of manufacture would not anticipate
22
the claimed design. More specifically, patent claims are given their broadest

reasonable interpretation during prosecution before the USPTO, whereas issued

patent claims are construed more narrowly during patent litigation, both in the

infringement and the validity contexts. See Phillips v. AWH Corp., 415 F.3d 1303,

1316 (Fed. Cir. 2005) (en banc); Dickinson v. Zurko, 527 U.S. 150, 152 (1999).

Another distinction between patent litigation and patent prosecution that

may give rise to an anticipation rejection where an infringement or invalidity

finding might not be made is the fact that patent application claims do not carry a

presumption of validity. See L.A. Gear, 988 F.2d at 1123. Consequently, the

rejection of an unissued claim need only be supported by substantial evidence

whereas the invalidity of an issued patent must be established under the more

stringent clear and convincing evidence standard. See, e.g., In re Morsa, 713 F.3d

104, 109 (Fed. Cir. 2013) (holding that an anticipation rejection made during

patent prosecution need only be supported by substantial evidence); Microsoft

Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 97, 113 (2011) (holding that patent invalidity

must be established by clear and convincing evidence); see also 35 U.S.C. § 282

(“A patent shall be presumed valid.”). Indeed, this Court has recognized that the

different anticipation and infringement standards may lead to very different

outcomes. Compare Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir.

2009) (holding a product-by-process claim limited to its process terms in the

23
infringement context), with In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)

(affirming the rejection of product-by-process claims as anticipated by a prior art

product “even though the prior art product was made by a different process”).

Accordingly, while the adage “that which infringes, if later, would anticipate, if

earlier” may be true, the converse is not necessarily so. For these reasons, the

USPTO urges the Court to reject SurgiSil’s argument that the anticipation analysis

for design patent claims needs to be identical to the infringement analysis for

issued design patents.

3. The Courts have never required analogous articles of manufacture

as a prerequisite to design patent anticipation

SurgiSil argues that the holdings in Gorham and Egyptian Goddess bar

rejections based on designs for nonanalogous articles of manufacture. (Br. 24-26.)

This argument is wrong for at least two reasons.

a. There is no analogous art requirement for anticipation in

utility or design patent law

From the outset, design patent applications were intended to be examined in

the same way as utility patent applications, see Du Mont and Janis at 861-62, and

that remains the case to this day. More specifically, section 171 of the modern

Patent Act provides that “[t]he provisions of this title relating to patents for

inventions shall apply to patents for designs, except as otherwise provided.”

35 U.S.C. § 171(b). In the utility patent world, a claim to one type of article of

24
manufacture may be anticipated by a nonanalogous prior art article of manufacture

having all of the structural elements of the claimed invention and capable of

performing the function recited in the claim. See Schreiber, 128 F.3d at 1478

(affirming the rejection of utility patent application claims to a popcorn dispenser

as anticipated by an oil can having the same shape and ability to function as

claimed).

A corollary principle exists that a design patent claim for the shape or

configuration of one type of article of manufacture may be anticipated by a design

for a different article of manufacture having the same shape or configuration –

even if the articles have different intended uses. See, e.g., In re Sadacca, 56 F.2d

1085, 1086 (CCPA 1932) (holding a design for an electric light socket anticipated

by a prior art design for a “nob” for turning the handle of a variometer with

substantially the same shape); see also MPEP § 1504.02 (“Anticipation does not

require that the claimed design and the prior art be from analogous arts.”).

SurgiSil fails to identify any case law overruling or even explaining why Schreiber

and Sadacca do not apply here.

In addition, as the Court correctly explained in Glavas:

It is true that the use to which an article is to be put has no

bearing on its patentability as a design and that if the prior
art discloses any article of substantially the same appearance as
that of an applicant, it is immaterial what the use of such
article is. In re Sadacca, 56 F.2d 1085, 19 C.C.P.A., Patents,
1123; In re Campbell, 104 F.2d 394, 26 C.C.P.A., Patents,
25
 1334. Accordingly, so far as anticipation by a single prior
art disclosure is concerned, there can be no question as to
nonanalogous art in design cases.

In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (emphases added). While the

Curver decision dismissed these statements as dicta because Glavas was decided

on obviousness grounds rather than anticipation, see Curver, 938 F.3d at 13427, the

Court expressly recognized that they are directed to the same fact pattern presented

here. Specifically, the statements in Glavas about nonanalogous art “contemplate[]

anticipation by a prior art article having a different ‘use’ than the article illustrated

in the design patent but nevertheless sharing ‘substantially the same appearance.’”

Curver, 938 F.3d at 1342 (quoting Glavas, 230 F.2d at 450). Thus, Glavas is more

relevant to the outcome of this case than Curver.

b. Gorham and Egyptian Goddess did not create an analogous

art requirement for anticipation in design patent cases

As originally set forth by the Supreme Court in Gorham, the ordinary

observer test is whether “if, in the eye of an ordinary observer, giving such

attention as a purchaser usually gives, two designs are substantially the same, if the

resemblance is such as to deceive such an observer, inducing him to purchase one

supposing it to be the other, the first one patented is infringed by the other.”

7
It is also worth noting that the portions of Curver discussing the role of the
article of manufacture in the anticipation analysis are likewise dicta, as Curver was
a patent infringement case.
26
Gorham Co. v. White, 81 U.S. 511, 528 (1871). When reaffirming the primacy of

this test in the infringement context in Egyptian Goddess (543 F.3d at 670, 678),

and then later in the anticipation context in International Seaway (589 F.3d at

1237-38), the Court never suggested or implied that the ordinary observer test

involves consideration of anything other than the ornamental features of the

claimed design. Moreover, none of these cases directly addresses the role of the

article of manufacture. In fact, the term “article of manufacture” does not appear

anywhere in the Egyptian Goddess decision, and it appears only once in

International Seaway, when quoting the text of 35 U.S.C. § 171. See Int’l Seaway,

589 F.3d at 1238.

According to SurgiSil, however, “embedded” within Gorham and Egyptian

Goddess’ discussion about an ordinary observer being deceived into purchasing an

article of manufacture with an infringing design lies a “necessar[y]

presuppos[ition]” that both designs are embraced by analogous articles of

manufacture. (Br. at 25.) Not so.

On one hand, while proof of consumer mistake and deception may be

helpful in establishing infringement and/or infringement damages, the courts have

never held that consumer mistake or deception are required to establish

infringement of a patented design. Moreover, it is unclear that this language was

27
ever intended to guide the anticipation analysis,8 especially during design patent

prosecution where physical examples of the claimed and prior art designs as

applied to or embraced in an article of manufacture are unavailable. On the other

hand, to interpret Gorham and Egyptian Goddess as holding that consumer mistake

and deception are necessary elements of the ordinary observer test would conflate

the purpose of design patent law with that of trade dress law. For all these reasons,

Gorham and Egyptian Goddess did not create an analogous art requirement for

anticipation in design patent cases.

c. SurgiSil has not shown that design patent overreaching is

likely to occur if the intended uses of articles of manufacture
are not considered during the examination of design patent
claims for novelty

According to SurgiSil, overly broad infringement claims will occur if the

function of a design’s underlying article of manufacture is not considered during

the infringement and/or anticipation analysis of design patent claims. (See Br. at

26-30.) As proof, SurgiSil cites three district court decisions allegedly holding that

design patent claims cannot be infringed by designs for nonanalogous articles of

manufacture: Vigil v. Walt Disney Co., No. 3:97-cv-4147, 1998 U.S. Dist. LEXIS

8
See, e.g., Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 432 (2016)
(quoting Gorham, 81 U.S. at 528, and stating that “[t]his Court has explained that a
design patent is infringed ‘if, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, two designs are substantially the same’”
without reference to deception or confusion).
28
22853 (N.D. Cal. Dec. 1, 1998); Kellman v. Coca-Cola Co., 280 F. Supp. 2d 670,

671-72 (E.D. Mich. 2003); PS Prods. Inc. v. Activision Blizzard, Inc., 140 F. Supp.

3d 795, 798 (E.D. Ark. 2014). (See Br. at 27-29.) These cases are both non-

binding and inapt.

Unlike the designs at issue here, there were significant differences in the

overall visual appearance of the claimed and accused designs in Vigil, Kellman,

and PS Products. More specifically, the patented design in Vigil (below) was for a

novelty duck call shaped like a hockey stick with certain images and words applied

to its surface:

(U.S. Patent No. D395,021 at Fig.7.) As illustrated, Vigil’s duck call design has a

uniformly thick shaft with a prominent hole in (at least) one end, and tapers sharply

from its heel to its toe. In contrast, the accused design for a hockey stick-shaped

key chain (below) appears to have a uniform thickness throughout and no visible

hole in its shaft:

29
(Mot. to Dismiss Am. Compl., Vigil v. Walt Disney Co., No. 3:97-cv-4147 (N.D.

Cal. Sept. 21, 1998), ECF No. 14, Ex. B) After noting that the claimed and

accused designs were embodied in nonanalogous articles of manufacture, the

District Court found that any similarity between the two designs arose “from the

fact that both are in the shape of a hockey stick and nothing more”:

Significantly, plaintiff’s duck call is not even an analogous

article of manufacture when compared with Disney’s key chain.
The similarity between the two items arises from the fact that
both are in the shape of a hockey stick and nothing more.
This mere similarity in appearance between plaintiff’s hockey
stick duck call and Disney’s hockey stick key chain is not
enough to claim a design patent infringement.

Vigil, 1998 U.S. Dist. LEXIS 22853 *9 (emphases added). Thus, in contrast to

SurgiSil’s assertions (Br. at 27-28), the District Court’s decision in Vigil is based,

at least in part, on differences between the two designs – not just differences in the

intended uses of their associated articles of manufacture.

Similar differences between the claimed and accused designs exist in

Kellman and PS Products. The patented design in Kellman was directed to a three-

30
dimensional design for a hat shaped like a wing-nut to be worn by fans of the

Detroit Red Wings® hockey team, who often refer to themselves as “Wing-Nuts”:

(U.S. Patent No. D387,541 at Fig.1.) In contrast, the accused design in Kellman

was for a two-dimensional image of a cartoon bear wearing a wing-nut-shaped hat

(below left) as applied to the surface of t-shirts (below right) and bottle caps (not

shown):

31
(Mot. for Summ. J., Kellman v. Coca-Cola Co., No. 2:03-cv-71542-JCO (E.D.

Mich. June 22, 2004) ECF No. 62-2, PageID.827 (left), ECF No. 62-3,

PageID.833 (right)) While the District Court in Kellman ultimately found that

these two designs were not substantially similar based on the intended uses of their

respective articles of manufacture, see Kellman, 280 F. Supp. 2d at 680, there were

certainly enough differences between the claimed design for a hat and the accused

image of a hat (e.g., opening size, wing shape) that an ordinary observer could find

that the former was not substantially similar to the latter independent of any

difference in the intended use of their underlying articles of manufacture.

Likewise, the patented design in PS Products was for a three-dimensional

ornamental design for a stun gun:

(U.S. Patent No. D576,246 at Fig.1); whereas the accused designs were for two-

dimensional images of weapons used by avatars in the Call Of Duty® video game,

i.e., “Combatant Suppression Knuckles” (left) and “Galvaknuckles” (right):

32
(https://callofduty.fandom.com/wiki/Combatant_Suppression_Knuckles (last

visited on Jan. 1, 2021); https://callofduty.fandom.com/wiki/Galvaknuckles (last

visited on Jan. 1, 2021)). The District Court ultimately dismissed PS Product’s

infringement claims based on the intended uses of the claimed and accused

designs’ respective articles of manufacture without ever examining the differences

in the designs themselves. See PS Prods., 140 F. Supp. 3d at 803 (“No reasonable

person would purchase defendants’ video game believing that they were

purchasing plaintiffs’ stun gun”). However, as in Vigil and Kellman, there are

striking differences between the claimed and accused designs in PS Products that

would prevent any ordinary observer from objectively finding that PS Products’

stun gun design is substantially similar to the accused video game designs.

Accordingly, none of the cases cited by SurgiSil considered whether a claimed

design for one type of article of manufacture could be infringed (or anticipated) by

a design for a different type of article having the same or substantially the same

shape, i.e., the situation presented here.

33
 To the extent that SurgiSil also argues that limiting designs to a specific

article of manufacture (or similar articles) is necessary to permit more expedient

prior art searches (see Br. at 30-31), the agency’s statutory mandate to issue valid

patents – in this case, claims to novel ornamental designs – takes primacy over

concerns about administrability.

4. The Court should not extend the Curver holding beyond design
patent claims directed to surface ornamentation

Although SurgiSil acknowledges that the Curver holding is limited to

designs for surface ornamentation, SurgiSil argues that the next “logical step”

would be to extend the Curver rationale to designs directed to the shape and/or

configuration of an article of manufacture. (See Br. at 21-23.) Moreover,

according to SurgiSil, not extending the Curver rationale to design patent claims

related to shape and configuration would be tantamount to permitting patents on

per se designs. Id. There are at least two problems with this argument.

First, on its face, the Court’s analysis appears to be limited to the overall

visual appearance (i.e., ornamental features) of the claimed and accused designs

applied to their respective articles of manufacture. In contrast to SurgiSil’s

urgings, the Court did not consider the intended uses (i.e., non-ornamental

features) of the articles of manufacture to which the claimed and accused designs

were applied. Accordingly, nothing in Curver disturbs longstanding legal

precedent holding that the non-ornamental features of the article of manufacture

34
recited in a design patent claim are irrelevant in the anticipation analysis. See, e.g.,

Sadacca, 56 F.2d at 1086; see also Zahn, 617 F.2d at 268; L.A. Gear, 988 F.2d at

1123; OddzOn Prods., 122 F.3d at 1405 (each holding that non-ornamental

features are not part of the design patent grant).

Second, to the extent that there may be circumstances when it is appropriate

to place emphasis on the article of manufacture recited in a design patent claim

directed to surface ornamentation, as in Curver, the Board correctly found that this

is not necessary when analyzing claims directed to the shape or configuration of an

article of manufacture, like SurgiSil’s claim, because the article of manufacture is

necessarily depicted in its entirety in the patent drawing(s). (Appx7 (“[U]nlike in

Curver, the Figure fully defines the invention of the claimed design and it is

appropriate to ignore the identification of the article of manufacture in the claim

language.”).) More specifically, when a design patent claim is directed to the

shape or configuration of an article of manufacture, there is no need for the

ordinary observer to look to anything beyond the illustration of the claimed design

because the claimed design and the article of manufacture are one and the same.

Id. This is true regardless of whether the ordinary observer is comparing two

spoons, two nail buffers, or even a paper stump and a lip implant.

35
 VI. CONCLUSION

This Court should affirm because substantial evidence supports the Board’s

finding that SurgiSil’s claimed design has substantially the same visual appearance

as Blick’s prior art design and, thus, is anticipated. This Court should also deny

SurgiSil’s request for relief under Curver because (1) Curver does not mandate

consideration of the intended use of an article of manufacture; (2) ample binding

precedent supports not extending the Curver rationale to the examination of design

patent claims; (3) there is no analogous art requirement for anticipation of design

patent claims; and (4) ample binding precedent supports not extending the Curver

rationale to the infringement or anticipation analysis of design patent claims for the

shape or configuration of an article of manufacture.

Respectfully submitted,
/s/ Mary L. Kelly
THOMAS W. KRAUSE
Solicitor
AMY J. NELSON
Senior Counsel for Patent Policy and
Litigation
MARY L. KELLY
WILLIAM LAMARCA
Associate Solicitors
Office of the Solicitor
U.S. Patent and Trademark Office
Mail Stop 8, P.O. Box 1450
Alexandria, Virginia 22313-1450
(571) 272-9035

36
 Attorneys for the Director of the
February 18, 2021 United States Patent and Trademark Office

37
 CERTIFICATE OF COMPLIANCE

Pursuant to Fed. R. App. Proc. 32(a)(7), I certify that the foregoing BRIEF

FOR APPELLEE – DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK

OFFICE complies with the type-volume limitation required by the Court’s rule. The

total number of words in the foregoing brief, excluding table of contents and table

of authorities, is 7,814 words as calculated using the Microsoft Word® software

program.

/s/ Mary L. Kelly

Mary L. Kelly
Associate Solicitor
U.S. Patent and Trademark Office
Mail Stop 8, P.O. Box 1450
Alexandria, Virginia 22313-1450