Claim Language Can Limit the Scope of a Design Patent to a Particular Article of Manufacture When the Patent’s Figures Would, Otherwise, Claim the Design per Se

The patentee alleged that baskets produced by the alleged infringer infringed its design patent for “an ornamental design for a pattern for a chair.” It argued that the scope of the patent should be defined not by the claim language, but by the patent’s figures, which did not apply the design to any article of manufacture, but rather illustrated it in the abstract. The district court disagreed and dismissed the complaint for failing to state a claim for infringement. The Federal Circuit affirmed, concluding that claim language can limit the scope of a design patent to a particular article of manufacture if the figures fail to do so.

Design patent protection for any “new, original and ornamental design for an article of manufacture” is permitted by 35 U.S.C. § 171. Traditionally, courts have focused on a design patent’s figures when construing its scope. This method is inappropriate, however, when the figures do no more than present the claimed design in the abstract. In so holding, the Federal Circuit highlighted precedent permitting design patents only for designs applied to articles of manufacture, and not designs per se. It noted, too, that the Patent Office has regularly refused to grant patents for designs “disembodied” from some article of manufacture. Moreover, the Manual of Patent Examining Procedure guidelines clearly state that designs are inseparable from their articles, and require examiners to reject claims for mere schemes of ornamentation.