Design Patent Obviousness in Heavy Industry

Design patents are subject to the requirement of non-obviousness in the same way as utility patents. §103 states that a patent is precluded when“.. the claimed invention as a whole would have been obvious ... to a person having ordinary skill in the art to which the claimed invention pertains”. Despite this language, there is some conflicting case law asserting that obviousness uses the ordinary observer standard, similar to infringement.

A recent PTAB decision tackled the issue of obviousness of a design for a warning on a coupler. The patent (US D673,982) was attacked by Caterpillar. The figure below shows the claimed design, which is essentially a triangular warning shape on a curved surface of the coupler:

Caterpillar argued that the design was obvious based on a Coupler Manual that should a triangular warning on a flat surface, and another prior art coupler that showed the curved surface. The PTAB agreed and found that the Petitioner’s evidence was persuasive in establishing not only that the two references were suitable to be combined, but also that the combination would be obvious.  Specifically, the PTAB found that the Petition provided expert testimony that one of ordinary skill in the art would look to the curved portion of the prior art coupler facing the operator “as the reasonable location for moving the warning symbol disclosed in the Coupler Manual” because, in this location on the coupler, the symbol would be “readily visible to the operator of the earth-moving equipment.”

It is interest that the  reasoning for combining the references is based on a desired functional result that solves a technical problem (enabling the operator to see the warning) as opposed to improving the ornamental design. Even though the perspective of obviousness is through the lens of an ordinary designer, that person can look to combine references not only to improve the ornamentation of the design, but also functional aspects of the design. Unfortunately, the decision does not address the fact that there appear to be many potential locations for the warning sign that would be visible to the operator, and what would motivate the person to put thee warning symbol on the particular curve in the way shown in the figure above. 

What may have contributed to the Board's willingness to find the claim obvious was that the patent owner did not file any papers during the proceedings. The PTAB nevertheless went through to conclude the proceedings. The Board first noted that generally, "... the lack of any appearance or communication by Patent Owner in a proceeding will constitute abandonment of the contest and will be construed by the Board as a request for adverse judgement under 37 C.F.R. 42.73(b)(4)." In this proceeding, however, because no meaningful communication indicating abandonment of the contest was received until after all trial due dates had passed, the Board determined that the appropriate course of action was to readdress the merits of the Petition.