In Re SURGISIL, L.L.P. ( 2021 )


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  • Case: 20-1940    Document: 42    Page: 1    Filed: 10/04/2021
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    IN RE: SURGISIL, L.L.P., PETER RAPHAEL,
    SCOTT HARRIS,
    Appellants
    ______________________
    2020-1940
    ______________________
    Appeal from the United States Patent and Trademark
    Office, Patent Trial and Appeal Board in No. 29/491,550.
    ______________________
    Decided: October 4, 2021
    ______________________
    ANGELA OLIVER, Haynes & Boone, LLP, Washington,
    DC, argued for appellants SurgiSil, L.L.P., Peter Raphael,
    Scott Harris. Also represented by JOHN RUSSELL EMERSON,
    ALAN N. HERDA, DEBRA JANECE MCCOMAS, VERA L.
    SUAREZ, Dallas, TX.
    MARY L. KELLY, Office of the Solicitor, United States
    Patent and Trademark Office, Alexandria, VA, argued for
    appellee Andrew Hirshfeld. Also represented by THOMAS
    W. KRAUSE, WILLIAM LAMARCA, AMY J. NELSON, FARHEENA
    YASMEEN RASHEED.
    ______________________
    Before MOORE, Chief Judge, NEWMAN and O’MALLEY,
    Circuit Judges.
    MOORE, Chief Judge.
    Case: 20-1940     Document: 42     Page: 2    Filed: 10/04/2021
    2                                       IN RE: SURGISIL, L.L.P.
    SurgiSil appeals a decision of the Patent Trial and Ap-
    peal Board affirming an examiner’s rejection of SurgiSil’s
    design patent application, No. 29/491,550. Because the
    Board erred in holding that the claimed design is not lim-
    ited to the particular article of manufacture identified in
    the claim, we reverse.
    I
    The ’550 application claims an “ornamental design for
    a lip implant as shown and described.” J.A. 19. The appli-
    cation’s only figure is shown below:
    J.A. 20.
    The examiner rejected the sole claim of the ’550 appli-
    cation as anticipated by a Dick Blick catalog (Blick). J.A.
    82–84. Blick discloses an art tool called a stump. J.A. 182.
    Blick’s stump is made of “tightly spiral-wound, soft gray
    paper” and is used “for smoothing and blending large areas
    of pastel or charcoal.” Id. An image of Blick’s stump is
    shown below:
    Id.
    The Board affirmed, finding that the differences in
    shape between the claimed design and Blick are minor.
    J.A. 2–5. It rejected SurgiSil’s argument that Blick could
    not anticipate because it disclosed a “very different” article
    of manufacture than a lip implant. J.A. 5. The Board rea-
    soned that “it is appropriate to ignore the identification of
    the article of manufacture in the claim language.” J.A. 7.
    It further explained that “whether a reference is analogous
    art is irrelevant to whether that reference anticipates.” Id.
    Case: 20-1940      Document: 42     Page: 3   Filed: 10/04/2021
    IN RE: SURGISIL, L.L.P.                                     3
    (quoting In re Schreiber, 
    128 F.3d 1473
    , 1478 (Fed. Cir.
    1997)). SurgiSil appeals. We have jurisdiction under 
    28 U.S.C. § 1295
    (a)(4)(A).
    II
    Although anticipation is ultimately a question of fact,
    the Board’s predicate decision that the article of manufac-
    ture identified in the claim is not limiting was a legal con-
    clusion. We review the Board’s legal conclusions de novo.
    Redline Detection, LLC v. Star Envirotech, Inc., 
    811 F.3d 435
    , 449 (Fed. Cir. 2015) (citing Rambus Inc. v. Rea, 
    731 F.3d 1248
    , 1251 (Fed. Cir. 2013)). We hold that the Board
    erred as a matter of law.
    A design claim is limited to the article of manufacture
    identified in the claim; it does not broadly cover a design in
    the abstract. The Patent Act permits the grant of a design
    patent only to “[w]hoever invents any new, original and or-
    namental design for an article of manufacture.” 
    35 U.S.C. § 171
    (a) (emphasis added). In Gorham Co. v. White, 
    81 U.S. 511
     (1871), the Supreme Court explained that “[t]he
    acts of Congress which authorize the grant of patents for
    designs” contemplate “not an abstract impression, or pic-
    ture, but an aspect given to those objects mentioned in the
    acts.” 
    Id.
     at 524–25 (emphasis added). Accordingly, in
    Curver Luxembourg, SARL v. Home Expressions Inc., 
    938 F.3d 1334
    , 1336 (Fed. Cir. 2019), we held that the claim at
    issue was limited to the particular article of manufacture
    identified in the claim, i.e., a chair. Consistent with this
    authority, the Patent Office’s examination guidelines state
    that a “[d]esign is inseparable from the article to which it
    is applied and cannot exist alone . . . .” Manual of Patent
    Examining Procedure § 1502.
    Here, the claim identifies a lip implant. The claim lan-
    guage recites “a lip implant,” J.A. 19, and the Board found
    that the application’s figure depicts a lip implant, J.A. 7.
    As such, the claim is limited to lip implants and does not
    cover other articles of manufacture. There is no dispute
    Case: 20-1940    Document: 42      Page: 4   Filed: 10/04/2021
    4                                      IN RE: SURGISIL, L.L.P.
    that Blick discloses an art tool rather than a lip implant.
    The Board’s anticipation finding therefore rests on an erro-
    neous interpretation of the claim’s scope.
    III
    We have considered the cases cited by the Director, and
    they do not support the Director’s position. Because the
    Board erred in holding that the claimed design is not lim-
    ited to lip implants, we reverse.
    REVERSED
    COSTS
    Costs to SurgiSil.
    

Document Info

Docket Number: 20-1940

Filed Date: 10/4/2021

Precedential Status: Precedential

Modified Date: 10/4/2021