The Article of Manufacture Identified in a Design Claim Limits the Claim and Applicable Prior Art

November 4, 2021

In re SurgiSil, L.L.P., No. 2020-1940, 14 F.4th 1380 (Fed. Cir. Oct. 4, 2021), concerns a patent applicant’s design claim for a lip implant that was rejected as being anticipated by a catalog’s disclosure of a similarly shaped art tool called a “stump.” Id. at 1381. The claimed lip implant design and the alleged anticipatory art tool are reproduced below.

Id.  SurgiSil argued that the catalog cannot anticipate because it discloses a “very different” article of manufacture than a lip implant. Id.  The PTAB rejected this argument and affirmed the rejection, reasoning that the article of manufacture identified in the claim can be ignored and that whether a reference is analogous art is irrelevant to whether the reference anticipates. Id.  

The Federal Circuit reversed. Id. at 1382.  It was undisputed that the design claim language recites “a lip implant” and the sole application figure depicts a lip implant. Id.  The Court concluded that the claim “is limited to lip implants and does not cover other articles of manufacture,” and thus the anticipation finding is based on an erroneous interpretation of the claim. Id.  The Court held that a design claim is limited to the specific article of manufacture identified in the claim, and “does not broadly cover a design in the abstract.” Id.  In so holding, the Court implicitly limited the scope of prior art for design claims.