Definition of a Design

In a design patent application, the subject matter which is claimed is the

design embodied in or applied to an article of manufacture (or portion thereof) and

not

the article itself.

Ex parte Cady,

1916

C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “

[35 U.S.C.] 171

refers, not to the

design of an article, but to the design for an article, and is inclusive of ornamental

designs of all kinds including surface ornamentation as well as configuration of goods.”

In re Zahn,

617 F.2d 261, 204 USPQ 988 (CCPA 1980).

The design for an article consists of the visual characteristics embodied

in or applied to an article.

Since a design is manifested in appearance, the subject matter of a design

patent application may relate to the configuration or shape of an article, to the surface

ornamentation applied to an article, or to the combination of configuration and surface

ornamentation.

Design is inseparable from the article to which it is applied and cannot

exist alone merely as a scheme of surface ornamentation. It must be a definite,

preconceived thing, capable of reproduction and not merely the chance result of a method.

See

In re SurgiSil, L.L.P.,

14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed.

Cir. 2021) (“A design claim is limited to the article of manufacture identified in the

claim; it does not broadly cover a design in the abstract.”);

Curver Luxembourg,

SARL v. Home Expressions, Inc.,

938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed.

Cir. 2019) (noting “that long-standing precedent, unchallenged regulation, and agency

practice all consistently support the view that design patents are granted only for a

design applied to an article of manufacture, and not a design

per se

”).