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CAFC Rules on LKQ v. GM Global, and USPTO Issues Immediate Guidance

“The new USPTO guidance brings LKQ v. GM Global ( ) to the attention of design examiners, but perhaps expectedly, it leaves many questions unanswered on how LKQ will be implemented at the USPTO.

LKQ overruled the previously long-standing Rosen-Durling approach to establishing design obviousness, in that:
• there is no more requirement that the primary reference be ‘basically the same’ as the claimed design
• there is no more requirement that any secondary references be ‘so related’ to the primary reference
• instead, it is only necessary that all references be ‘analogous art’ in the same field as the article of manufacture

The new USPTO guidance does provide a series of 4 factual inquiries for design examiners to undertake before asserting an obviousness rejection under the new LKQ/Whitman Saddle approach, namely:
1. find a primary reference as similar as possible to the claim, and then find secondary references, all from the ‘same field of endeavor’ or at least from ‘analogous art’
2. identify the differences between the claim and the found references
3. consider the knowledge of an ordinary *designer* of such articles
4. consider any ‘secondary considerations’ as indicia of nonobviousness

The USPTO guidance helpfully emphasizes that: ‘[T]here must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.’

For design prosecutors, LKQ does *not* automatically mean we should blindly accept Franken-art obviousness rejections that simply cobble together bits of prior art into the claimed design. Even if Whitman Saddle (as affirmed by LKQ) said it would be obvious to mate the front half of one saddle to the complementary rear half of another saddle, examiners should be strongly challenged on any obviousness rejections reliant upon assembling a *new arrangement or layout* of design elements that would not have naturally mated together in their original contexts. Doing that would arguably run afoul of the CAFC’s admonition in Uniroyal v. Rudkin-Wiley (1988), ‘It is impermissible to use the claims as a frame and the prior-art references as a mosaic to piece together a facsimile of the claimed invention.’”

-Post contributed by Joseph J. Wang, a registered patent attorney and principal at Schwegman Lundberg & Woessner. Joseph J. Wang practices in a variety of technological disciplines, including software, Internet, digital media, and mechanical innovations, as well as industrial designs.

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