Case: 20-1940 Document: 42 Page: 1 Filed: 10/04/2021
United States Court of Appeals
for the Federal Circuit
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IN RE: SURGISIL, L.L.P., PETER RAPHAEL,
SCOTT HARRIS,
Appellants
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2020-1940
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 29/491,550.
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Decided: October 4, 2021
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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.
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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.
