Editing MPEP 1500

{{MPEP Chapter|1400|1600}}

'''<big>Chapter 1500 Design Patents</big>'''

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==1501 Statutes and Rules Applicable==

The right to a patent for a design stems from:

35 U.S.C. 171. Patents for designs. 

Whoever invents any new, original and ornamental design for 
an article of manufacture may obtain a patent therefor, subject to 
the conditions and requirements of this title.

The provisions of this title relating to patents for inventions 
shall apply to patents for designs, except as otherwise provided.

37 CFR 1.151. Rules applicable. 

The rules relating to applications for patents for other inventions 
or discoveries are also applicable to applications for patents 
for designs except as otherwise provided.

37 CFR 1.152-1.155, which relate only to design 
patents, are reproduced in the sections of this chapter.

It is noted that design patent applications are not 
included in the Patent Cooperation Treaty (PCT), and 
the procedures followed for PCT international applications 
are not to be followed for design patent applications.


The practices set forth in other chapters of this 
Manual of Patent Examining Procedure (MPEP) are 
to be followed in examining applications for design 
patents, except as particularly pointed out in the chapter.


1502Definition of a Design [R-2]

In a design patent application, the subject matter 
which is claimed is the design embodied in or applied 
to an article of manufacture (or portion thereof) and 
not the article itself. Ex parte Cady, 1916 C.D. 62, 
232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 
refers, not to the design of an article, but to the design 
for an article, and is inclusive of ornamental designs 
of all kinds including surface ornamentation as well 
as configuration of goods.” In re Zahn, 617 F.2d 261, 
204 USPQ 988 (CCPA 1980).

The design for an article consists of the visual characteristics 
embodied in or applied to an article.

Since a design is manifested in appearance, the subject 
matter of a design patent application may relate to 
the configuration or shape of an article, to the surface 
ornamentation applied to an article, or to the combination 
of configuration and surface ornamentation.

Design is inseparable from the article to which it is 
applied and cannot exist alone merely as a scheme of 
surface ornamentation. It must be a definite, preconceived 
thing, capable of reproduction and not merely 
the chance result of a method.

¶ 15.42 Visual Characteristics

The design for an article consists of the visual characteristics or 
aspect displayed by the article. It is the appearance presented by 
the article which creates an impression through the eye upon the 
mind of the observer.

¶ 15.43 Subject Matter of Design Patent

Since a design is manifested in appearance, the subject matter 
of a Design Patent may relate to the configuration or shape of an 
article, to the surface ornamentation on an article, or to both.



¶ 15.44 Design Inseparable From Article to Which Applied

Design is inseparable from the article to which it is applied, 
and cannot exist alone merely as a scheme of ornamentation. It 
must be a definite preconceived thing, capable of reproduction, 




 

and not merely the chance result of a method or of a combination 
of functional elements (35 U.S.C. 171; 35 U.S.C. 112, first and 
second paragraphs). See Blisscraft of Hollywood v.United Plastics 
Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 
F.2d 694, 131 USPQ 55 (2d Cir. 1961).



1502.01Distinction Between Design and 
Utility Patents [R-2]

In general terms, a “utility patent” protects the way 
an article is used and works (35 U.S.C. 101), while a 
“design patent” protects the way an article looks 
(35 
U.S.C. 171). The ornamental appearance for an 
article includes its shape/configuration or surface 
ornamentation applied to the article, or both. Both 
design and utility patents may be obtained on an article 
if invention resides both in its utility and ornamental 
appearance.

While utility and design patents afford legally separate 
protection, the utility and ornamentality of an 
article may not be easily separable.  Articles of 
manufacture may possess both functional and ornamental 
characteristics.

Some of the more common differences between 
design and utility patents are summarized below:

(A)The term of a utility patent on an application 
filed on or after June 8, 1995 is 20 years measured 
from the U.S. filing date; or if the application contains 
a specific reference to an earlier application under 
35 
U.S.C. 120, 121, or 365(c), 20 years from the earliest 
effective U.S. filing date, while the term of a 
design patent is 14 years measured from the date of 
grant (see 35 U.S.C. 173). 

(B)Maintenance fees are required for utility patents 
(see 37 CFR 1.20), while no maintenance fees are 
required for design patents.

(C)Design patent applications include only a single 
claim, while utility patent applications can have 
multiple claims.

(D)Restriction between plural, distinct inventions 
is discretionary on the part of the examiner in utility 
patent applications (see MPEP § 803), while it is mandatory 
in design patent applications (see MPEP 
§
 
1504.05). 

(E)An international application naming various 
countries may be filed for utility patents under the 
Patent Cooperation Treaty (PCT), while no such provision 
exists for design patents. 

(F)Foreign priority under 35 U.S.C. 119(a)-(d) 
can be obtained for the filing of utility patent applications 
up to 1 year after the first filing in any country 
subscribing to the Paris Convention, while this period 
is only 6 months for design patent applications (see 
35 
U.S.C. 172).

(G)Utility patent applications may claim the benefit 
of a provisional application under 35 U.S.C. 
119(e) whereas design patent applications may not. 
See 35 U.S.C. 172 and 37 CFR 1.78 (a)(4).

(H)A Request for Continued Examination (RCE) 
under 37 CFR 1.114 may only be filed in utility and 
plant applications filed under 35 U.S.C. 111(a) on or 
after June 8, 1995, while RCE is not available for 
design applications (see 37 CFR 1.114(e)).

(I) Effective July 14, 2003, continued prosecution 
application (CPA) practice under 37 CFR 
1.53(d) is only available for design applications 
(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, 
CPA practice was available for utility and plant 
applications only where the prior application has a filing 
date prior to May 29, 2000 .

(J)Utility patent applications filed on or after 
November 29, 2000 are subject to application publication 
under 35 U.S.C. 122(b)(1)(A), whereas design 
applications are not subject to application publication 
(see 35 U.S.C. 122(b)(2)).

Other distinctions between design and utility patent 
practice are detailed in this chapter. Unless otherwise 
provided, the rules for applications for utility patents 
are equally applicable to applications for design patents 
(35 U.S.C. 171 and 37 CFR 1.151).

1503Elements of a Design Patent Application 
[R-2]

A design patent application has essentially the elements 
required of an application for a utility patent 
filed under 35 
U.S.C. 101 (see Chapter 600). The 
arrangement of the elements of a design patent application 
and the sections of the specification are as 
specified in 37 CFR 1.154.




 

A claim in a specific form is a necessary element of 
a design patent application. See MPEP § 1503.01, 
subsection III.

A drawing is an essential element of a design patent 
application. See MPEP § 1503.02 for requirements 
for drawings.

1503.01Specification [R-5]

37 CFR 1.153. Title, description and claim, oath or 
declaration. 

(a)The title of the design must designate the particular article. 
No description, other than a reference to the drawing, is ordinarily 
required. The claim shall be in formal terms to the ornamental 
design for the article (specifying name) as shown, or as shown and 
described. More than one claim is neither required nor permitted.

(b)The oath or declaration required of the applicant must comply 
with § 1.63.

37 CFR 1.154. Arrangement of application elements in a 
design application.

(a)The elements of the design application, if applicable, 
should appear in the following order:

(1)Design application transmittal form.

(2)Fee transmittal form.

(3)Application data sheet (see § 1.76).

(4)Specification.

(5)Drawings or photographs.

(6)Executed oath or declaration (see § 
  
1.153(b)).

(b)The specification should include the following sections 
in order:

(1)Preamble, stating the name of the applicant, title of 
the design, and a brief description of the nature and intended use 
of the article in which the design is embodied.

(2)Cross-reference to related applications (unless 
included in the application data sheet).

(3)Statement regarding federally sponsored research or 
development.

(4)Description of the figure or figures of the drawing.

(5)Feature description.

(6)A single claim.

(c)The text of the specification sections defined in paragraph 
(b) of this section, if applicable, should be preceded by a 
section heading in uppercase letters without underlining or bold 
type.



¶ 15.05 Design Patent Specification Arrangement

The following order or arrangement should be observed in 
framing a design patent specification:

(1)Preamble, stating name of the applicant, title of the 
design, and a brief description of the nature and intended use of 
the article in which the design is embodied.

(2)Cross-reference to related applications unless included 
in the application data sheet.

(3)Statement regarding federally sponsored research or 
development.

(4)Description of the figure or figures of the drawing.

(5)Descriptive statement, if any.

(6)A single claim.



I.PREAMBLE AND TITLE

A preamble, if included, should state the name of 
the applicant, the title of the design, and a brief 
description of the nature and intended use of the article 
in which the design is embodied (37 CFR 1.154).

The title of the design identifies the article in which 
the design is embodied by the name generally known 
and used by the public but it does not define the scope 
of the claim. See MPEP § 1504.04, subsection I.A. 
The title may be directed to the entire article embodying 
the design while the claimed design shown in full 
lines in the drawings may be directed to only a portion 
of the article. However, the title may not be directed 
to less than the claimed design shown in full lines in 
the drawings. A title descriptive of the actual article 
aids the examiner in developing a complete field of 
search of the prior art and further aids in the proper 
assignment of new applications to the appropriate 
class, subclass, and patent examiner, and the proper 
classification of the patent upon allowance of the 
application. It also helps the public in understanding 
the nature and use of the article embodying the design 
after the patent has been issued. For example, a broad 
title such as “Adapter Ring” provides little or no 
information as to the nature and intended use of the 
article embodying the design. If a broad title is used, 
the description of the nature and intended use of the 
design may be incorporated into the preamble. Absent 
an amendment requesting deletion of the description, 
it would be printed on any patent that would issue.

When a design is embodied in an article having 
multiple functions or comprises multiple independent 
parts or articles that interact with each other, the title 
must clearly define them as a single entity, for example, 
combined or combination, set, pair, unit assembly.


Since 37 CFR 1.153 requires that the title must designate 
the particular article, and since the claim must 
be in formal terms to the “ornamental design for the 
article (specifying name) as shown, or as shown and 
described,” the title and claim must correspond. When 




 

the title and claim do not correspond, the title should 
be objected to under 37 CFR 1.153 as not corresponding 
to the claim.

However, it is emphasized that, under the second 
paragraph of 35 U.S.C. 112, the claim defines “the 
subject matter which the applicant regards as his 
invention” (emphasis added); that is, the ornamental 
design to be embodied in or applied to an article. 
Thus, the examiner should afford the applicant substantial 
latitude in the language of the title/claim. The 
examiner should only require amendment of the title/
claim if the language is clearly misdescriptive, inaccurate, 
or unclear (i.e., the language would result in a 
rejection of the claim under 35 U.S.C. 112, second 
paragraph; see MPEP § 1504.04, subsection III). The 
use of language such as “or the like” or “or similar 
article” in the title when directed to the environmentof the article embodying the design will not be the 
basis for a rejection of the claim under 35 U.S.C. 112, 
second paragraph. Such language is indefinite 
when it refers to the area of articles defining the subject 
matter of the design. An acceptable title would 
be “door for cabinets, houses, or the like,” while the 
title “door or the like” would be unacceptable and the 
claim will be rejected under 35 U.S.C. 112, second 
paragraph. Ex parte Pappas, 23 USPQ2d 1636 (Bd. 
Pat. App. & Inter. 1992). See also MPEP § 1504.04; 
subsection III.

Amendments to the title, whether directed to the 
article in which the design is embodied or its environment, 
must have antecedent basis in the original disclosure 
and may not introduce new matter. Ex parte 
Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 
1992). If an amendment to the title is directed to the 
environment in which the design is used and the 
amendment would introduce new matter, the amendment 
to the title must be objected to under 35 
U.S.C. 
132. If an amendment to the title is directed to the article 
in which the design is embodied and the amendment 
would introduce new matter, in addition to the 
objection under 35 U.S.C. 132, the claim must be 
rejected under 35 U.S.C. 112, first paragraph.

Any amendment to the language of the title should 
also be made at each occurrence thereof throughout 
the application, except in the oath or declaration. If 
the title of the article is not present in the original figure 
descriptions, it is not necessary to incorporate the 
title into the descriptions as part of any amendment to 
the language of the title.

¶ 15.05.01 Title of Design Invention

The title of a design being claimed must correspond to the 
name of the article in which the design is embodied or applied to. 
See MPEP § 1503.01.

¶ 15.59 Amend Title

For [1], the title [2] amended throughout the application, original 
oath or declaration excepted, to read: [3]

Examiner Note:

1.In bracket 1, insert reason.

2.In bracket 2, insert --should be-- or --has been--.

II.DESCRIPTION

No description of the design in the specification 
beyond a brief description of the drawing is generally 
necessary, since as a rule the illustration in the drawing 
views is its own best description. In re Freeman, 
23 App. D.C. 226 (App. D.C. 1904). However, while 
not required, such a description is not prohibited and 
may be incorporated, at applicant’s option, into the 
specification or may be provided in a separate paper. 
Ex parte Spiegel, 1919 C.D. 112, 268 O.G. 741 
(Comm’r Pat. 1919). Descriptions of the figures are 
not required to be written in any particular format, 
however, if they do not describe the views of the 
drawing clearly and accurately, the examiner should 
object to the unclear and/or inaccurate descriptions 
and suggest language which is more clearly descriptive 
of the views. 

In addition to the figure descriptions, the following 
types of statements are permissible in the specification:


(A)Description of the appearance of portions of 
the claimed design which are not illustrated in the 
drawing disclosure. Such a description, if provided, 
must be in the design application as originally filed, 
and may not be added by way of amendment after the 
filing of the application as it would be considered new 
matter.

(B)Description disclaiming portions of the article 
not shown in the drawing as forming no part of the 
claimed design.

(C)Statement indicating the purpose of broken 
lines in the drawing, for example, environmental 
structure or boundaries that form no part of the design 
to be patented.




 

(D)Description denoting the nature and environmental 
use of the claimed design, if not included in 
the preamble pursuant to 37 CFR 1.154 and MPEP 
§
 
1503.01, subsection I.

It is the policy of the Office to attempt to resolve 
questions about the nature and intended use of the 
claimed design prior to examination by making a telephone 
inquiry at the time of initial docketing of the 
application. This will enable the application to be 
properly classified and docketed to the appropriate 
examiner and to be searched when the application 
comes up for examination in its normal course without 
the need for a rejection under 35 
U.S.C. 112 prior 
to a search of the prior art. Explanation of the nature 
and intended use of the article may be added to the 
specification provided it does not constitute new matter. 
It may alternately, at applicant’s option, be submitted 
in a separate paper without amendment of the 
specification.

(E)A “characteristic features” statement describing 
a particular feature of the design that is considered 
by applicant to be a feature of novelty or nonobviousness 
over the prior art (37 CFR 1.71(c)).

This type of statement may not serve as a basis for 
determining patentability by an examiner. In determining 
the patentability of a design, it is the overall 
appearance of the claimed design which must be 
taken into consideration. In re Rosen, 673 F.2d 388, 
213 USPQ 347 (CCPA 1982); In re Leslie, 547 F.2d 
116, 192 USPQ 427 (CCPA 1977). Furthermore, the 
inclusion of such a statement in the specification is at 
the option of applicant and will not be suggested by 
the examiner.

¶ 15.47 Characteristic Feature Statement

A “characteristic features” statement describing a particular 
feature of novelty or nonobviousness in the claimed design may 
be permissible in the specification. Such a statement should be in 
terms such as “The characteristic feature of the design resides in 
[1],” or if combined with one of the Figure descriptions, in terms 
such as “the characteristic feature of which resides in [2].” While 
consideration of the claim goes to the total or overall appearance, 
the use of a “characteristic feature” statement may serve later to 
limit the claim (McGrady v. Aspenglas Corp., 487 F. Supp. 859, 
208 USPQ 242 (S.D.N.Y. 1980)).

Examiner Note:

In brackets 1 and 2, insert brief but accurate description of the 
feature of novelty or nonobviousness of the claimed design.

¶ 15.47.01 Feature Statement Caution

The inclusion of a feature statement in the specification is 
noted. However, the patentability of the claimed design is not 
based on the specified feature but rather on a comparison of the 
overall appearance of the design with the prior art. In re Leslie, 
547 F.2d 116, 192 USPQ 427 (CCPA 1977).

The following types of statements are not permissible 
in the specification:

(A)A disclaimer statement directed to any portion 
of the claimed design that is shown in solid lines 
in the drawings is not permitted in the specification of 
an issued design patent. However, the disclaimer 
statement may be included in the design application 
as originally filed to provide antecedent basis for a 
future amendment. See Ex parte Remington, 114 O.G. 
761, 1905 C.D. 28 (Comm’r Pat. 1904); In re Blum,
374 F.2d 904, 153 USPQ 177 (CCPA 1967).

(B)Statements which describe or suggest other 
embodiments of the claimed design which are not 
illustrated in the drawing disclosure, except one that is 
a mirror image of that shown or has a shape and 
appearance that would be evident from the one 
shown, are not permitted in the specification of an 
issued design patent. However, such statements may 
be included in the design application as originally 
filed to provide antecedent basis for a future amendment. 
In addition, statements which attempt to 
broaden the scope of the claimed design beyond that 
which is shown in the drawings are not permitted.

(C)Statements describing matters that are 
directed to function or are unrelated to the design. 

¶ 15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications 
are concerned solely with the ornamental appearance of an article 
of manufacture. The functional and/or structural features stressed 
by applicant in the papers are of no concern in design cases, and 
are neither permitted nor required. Function and structure fall 
under the realm of utility patent applications.



¶ 15.46.01 Impermissible Descriptive Statement

 The descriptive statement included in the specification is 
impermissible because [1]. See MPEP § 1503.01, subsection II. 
Therefore, the description should be canceled as any description 
of the design in the specification, other than a brief description of 
the drawing, is generally not necessary, since as a general rule, the 
illustration in the drawing views is its own best description. 

Examiner Note:




 

In bracket 1, insert the reason why the descriptive statement is 
improper.



¶ 15.60 Amend All Figure Descriptions

For [1], the figure descriptions [2] amended to read: [3]

Examiner Note:

1.In bracket 1, insert reason.

2.In bracket 2, insert --should be-- or --have been-.

3.In bracket 3, insert amended text.

¶ 15.61 Amend Selected Figure Descriptions

For [1], the description(s) of Fig(s). [2] [3] amended to read: 
[4]

Examiner Note:

1.In bracket 1, insert reason.

2.In bracket 2, insert selected Figure descriptions.

3.In bracket 3, insert --should be-- or --have been-.

4.In bracket 4, insert amended text.

III.DESIGN CLAIM

The requirements for utility claims specified in 
37 
CFR 1.75 do not apply to design claims. Instead, 
the form and content of a design claim is set forth in 
37 CFR 1.153:

37 CFR 1.153. ... claim...

(a)... The claim shall be in formal terms to the ornamental 
design for the article (specifying name) as shown or as shown and 
described. More than one claim is neither required nor permitted.



A design patent application may only include a single 
claim. The single claim should normally be in formal 
terms to “The ornamental design for (the article 
which embodies the design or to which it is applied) 
as shown.” The description of the article in the claim 
should be consistent in terminology with the title of 
the invention. See MPEP §
 
1503.01, subsection I.

When the specification includes a proper 
descriptive statement of the design (see MPEP 
§
 
1503.01, subsection II), or a proper showing of 
modified forms of the design or other descriptive matter 
has been included in the specification, the words 
“and described” must be added to the claim following 
the term “shown”; i.e., the claim must read “The ornamental 
design for (the article which embodies the 
design or to which it is applied) as shown and 
described.” 

Full lines in the drawing show the claimed 
design. Broken lines are used for numerous purposes. 
Under some circumstances, broken lines are used to 
illustrate the claimed design (i.e., stitching and fold 
lines). Broken lines are not permitted for the purpose 
of identifying portions of the claimed design which 
are immaterial or unimportant. See In re Blum, 374 
F.2d 904, 907, 153 USPQ 177, 180 (CCPA 1967) 
(there are “no portions of a design which are ‘immaterial’ 
or ‘not important.’ A design is a unitary thing and 
all of its portions are material in that they contribute 
to the appearance which constitutes the design.”). See 
also MPEP § 1503.02, subsection III. 

¶ 15.62 Amend Claim “As Shown”

For proper form (37 CFR 1.153), the claim [1] amended to 
read: “[2] claim: The ornamental design for [3] as shown.”

Examiner Note:

1.In bracket 1, insert --must be--.

2.In bracket 2, insert --I-- or --We--.

3.In bracket 3, insert title of the article in which the design is 
embodied or applied.

¶ 15.63 Amend Claim “As Shown and Described”

For proper form (37 CFR 1.153), the claim [1] amended to 
read: “[2] claim: The ornamental design for [3] as shown and 
described.”

Examiner Note:

1.In bracket 1, insert --must be--.

2.In bracket 2, insert --I-- or --We--.

3.In bracket 3, insert title of the article in which the design is 
embodied or applied.

¶ 15.64 Addition of “And Described” to Claim

Because of [1] -- and described -- [2] added to the claim after 
“shown.”

Examiner Note:

1.In bracket 1, insert reason.

2.In bracket 2, insert --must be--.

1503.02Drawing [R-5]

37 CFR 1.152. Design drawings.

The design must be represented by a drawing that complies 
with the requirements of § 1.84 and must contain a sufficient number 
of views to constitute a complete disclosure of the appearance 
of the design. Appropriate and adequate surface shading should be 
used to show the character or contour of the surfaces represented. 
Solid black surface shading is not permitted except when used to 
represent the color black as well as color contrast. Broken lines 
may be used to show visible environmental structure, but may not 
be used to show hidden planes and surfaces that cannot be seen 
through opaque materials. Alternate positions of a design component, 
illustrated by full and broken lines in the same view are not 
permitted in a design drawing. Photographs and ink drawings are 
not permitted to be combined as formal drawings in one applica





 

tion. Photographs submitted in lieu of ink drawings in design 
patent applications must not disclose environmental structure but 
must be limited to the design claimed for the article.

Every design patent application must include either 
a drawing or a photograph of the claimed design. As 
the drawing or photograph constitutes the entire 
visual disclosure of the claim, it is of utmost importance 
that the drawing or photograph be clear and 
complete, and that nothing regarding the design 
sought to be patented is left to conjecture.

 When inconsistencies are found among the views, 
the examiner should object to the drawings and 
request that the views be made consistent. Ex parte 
Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 
1978); Hadco Products, Inc. v. Lighting Corp. of 
America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 
496, 503 (E.D. Pa. 1970), vacated on other grounds,
462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When 
the inconsistencies are of such magnitude that the 
overall appearance of the design is unclear, the claim 
should be rejected under 35 U.S.C. 112, first and second 
paragraphs, as nonenabling and indefinite. See 
MPEP § 1504.04, subsection I.A.

¶ 15.05.03 Drawing/Photograph Disclosure Objected To

The drawing/photograph disclosure is objected to [1].

Examiner Note:

In bracket 1, insert statutory or regulatory basis for objection 
and an explanation.



¶ 15.05.04 Replacement Drawing Sheets Required

Corrected drawing sheets in compliance with 37 CFR 1.121(d) 
are required in reply to the Office action to avoid abandonment of 
the application. Any amended replacement drawing sheet should 
include all of the figures appearing on the immediate prior version 
of the sheet, even if only one figure is being amended. The figure 
or figure number of an amended drawing should not be labeled as 
amended. If a drawing figure is to be canceled, the appropriate 
figure must be removed from the replacement sheet, and where 
necessary, the remaining figures must be renumbered and appropriate 
changes made to the brief description of the several views 
of the drawings for consistency. Additional replacement sheets 
may be necessary to show the renumbering of the remaining figures. 
If all the figures on a drawing sheet are canceled, a replacement 
sheet is not required. A marked-up copy of the drawing 
sheet (labeled as “Annotated Sheet”) including an annotation 
showing that all the figures on that drawing sheet have been canceled 
must be presented in the amendment or remarks section that 
explains the change to the drawings. Each drawing sheet submitted 
after the filing date of an application must be labeled in the top 
margin as either “Replacement Sheet” or “New Sheet” pursuant to 
37 CFR 1.121(d). If the changes are not accepted by the examiner, 
the applicant will be notified and informed of any required corrective 
action in the next Office action.



¶ 15.05.05 Drawing Correction Required Prior to Appeal

Any appeal of the design claim must include the correction of 
the drawings approved by the examiner in accordance with Ex 
parte Bevan, 142 USPQ 284 (Bd. App. 1964).

Examiner Note:

This form paragraph can be used in a FINAL rejection where 
an outstanding requirement for a drawing correction has not been 
satisfied.

¶ 15.07 Avoidance of New Matter

When preparing new drawings in compliance with the requirement 
therefor, care must be exercised to avoid introduction of 
anything which could be construed to be new matter prohibited by 
35 U.S.C. 132 and 37 
CFR 1.121.

Form paragraph 15.48 may be used to notify applicant 
of the necessity for good drawings.

¶ 15.48 Necessity for Good Drawings

The necessity for good drawings in a design patent application 
cannot be overemphasized. As the drawing constitutes the whole 
disclosure of the design, it is of utmost importance that it be so 
well executed both as to clarity of showing and completeness, that 
nothing regarding the design sought to be patented is left to conjecture. 
An insufficient drawing may be fatal to validity (35 
U.S.C. 112, first paragraph). Moreover, an insufficient drawing 
may have a negative effect with respect to the effective filing date 
of a continuing application.

In addition to the criteria set forth in 37 CFR 1.81-
1.88, design drawings must also comply with 37 CFR 
1.152 as follows:

I.VIEWS

The drawings or photographs should contain a sufficient 
number of views to disclose the complete 
appearance of the design claimed, which may include 
the front, rear, top, bottom and sides. Perspective 
views are suggested and may be submitted to clearly 
show the appearance of three dimensional designs. If 
a perspective view is submitted, the surfaces shown 
would normally not be required to be illustrated in 
other views if these surfaces are clearly understood 
and fully disclosed in the perspective.

Views that are merely duplicative of other views of 
the design or that are flat and include no surface ornamentation 
may be omitted from the drawing if the 
specification makes this explicitly clear. See MPEP 




 

§
 
1503.01, subsection II. For example, if the left and 
right sides of a design are identical or a mirror image, 
a view should be provided of one side and a statement 
made in the drawing description that the other side is 
identical or a mirror image. If the design has a flat 
bottom, a view of the bottom may be omitted if the 
specification includes a statement that the bottom is 
flat and devoid of surface ornamentation. The term 
“unornamented” should not be used to describe visible 
surfaces which include structure that is clearly not 
flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 
131 USPQ 413 (D. Del. 1961).

Sectional views presented solely for the purpose of 
showing the internal construction or functional/ 
mechanical features are unnecessary and may lead to 
confusion as to the scope of the claimed design. Ex 
parte Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm’r 
Pat. 1901); Ex parte Kohler, 1905 C.D. 192, 116 O.G. 
1185 (Comm’r Pat. 1905). Such views should be 
objected to under 35 
U.S.C. 112, second paragraph, 
and their cancellation should be required. However, 
where the exact contour or configuration of the exterior 
surface of a claimed design is not apparent from 
the views of the drawing, and no attempt is made to 
illustrate features of internal construction, a sectional 
view may be included to clarify the shape of 
said 
design. Ex parte Lohman, 1912 C.D. 336, 
184 
O.G. 287 (Comm’r Pat. 1912). When a sectional 
view is added during prosecution, the examiner must 
determine whether there is antecedent basis in the 
original disclosure for the material shown in hatching 
in the sectional view (37 
CFR 1.84(h)(3) and MPEP 
§
 
608.02).

II.SURFACE SHADING

While surface shading is not required under 37 
CFR 1.152, it may be necessary in particular cases to 
shade the figures to show clearly the character and 
contour of all surfaces of any 3-dimensional aspects 
of the design. Surface shading is also necessary to distinguish 
between any open and solid areas of the article. 
However, surface shading should not be used on 
unclaimed subject matter, shown in broken lines, to 
avoid confusion as to the scope of the claim.

Lack of appropriate surface shading in the drawing 
as 
filed may render the design nonenabling and indefinite 
under 35 U.S.C. 112, first and second paragraphs. 
Additionally, if the surface shape is 
not 
evident from the disclosure as filed, the addition of 
surface shading after filing may comprise new matter. 
Solid black surface shading is not permitted except 
when used to represent the color black as well as color 
contrast. Oblique line shading must be used to show 
transparent, translucent and highly polished or reflective 
surfaces, such as a mirror. Contrast in materials 
may be shown by using line shading in one area 
and stippling in another. By using this technique, the 
claim will broadly cover contrasting surfaces unlimited 
by colors. The claim would not be limited to specific 
material either, as long as the appearance of the 
material does not patentably depart from the visual 
appearance illustrated in the drawing.

Form paragraph 15.49 may be used to notify applicant 
that surface shading is necessary.

¶ 15.49 Surface Shading Necessary

The drawing figures should be appropriately and adequately 
shaded to show clearly the character and/or contour of all surfaces 
represented. See 37 CFR 1.152. This is of particular importance 
in the showing of three (3) dimensional articles where it is necessary 
to delineate plane, concave, convex, raised, and/or depressed 
surfaces of the subject matter, and to distinguish between open 
and closed areas. Solid black surface shading is not permitted 
except when used to represent the color black as well as color contrast.


III.BROKEN LINES

The two most common uses of broken lines are to 
disclose the environment related to the claimed design 
and to define the bounds of the claim. Structure that is 
not part of the claimed design, but is considered necessary 
to show the environment in which the design is 
associated, may be represented in the drawing by broken 
lines. This includes any portion of an article in 
which the design is embodied or applied to that is not 
considered part of the claimed design. In re Zahn, 
617 
F.2d 261, 204 USPQ 988 (CCPA 1980). 
Unclaimed subject matter may be shown in broken 
lines for the purpose of illustrating the environment 
in which the article embodying the design is 
used. Unclaimed subject matter must be described as 
forming no part of the claimed design or of a specified 
embodiment thereof. A boundary line may be shown 
in broken lines if it is not intended to form part of the 
claimed design. Applicant may choose to define the 
bounds of a claimed design with broken lines when 
the boundary does not exist in reality in the article 
embodying the design. It would be understood that the 




 

claimed design extends to the boundary but does not 
include the boundary. Where no boundary line is 
shown in a design application as originally filed, but it 
is clear from the design specification that the boundary 
of the claimed design is a straight broken line connecting 
the ends of existing full lines defining the 
claimed design, applicant may amend the drawing(s) 
to add a straight broken line connecting the ends of 
existing full lines defining the claimed subject matter. 
Any broken line boundary other than a straight broken 
line may constitute new matter prohibited by 
35 
U.S.C. 132 and 37 CFR 1.121(f). 

However, broken lines are not permitted for the 
purpose of indicating that a portion of an article is of 
less importance in the design. In re Blum, 374 F.2d 
904, 153 USPQ 177 (CCPA 1967). Broken lines may 
not be used to show hidden planes and surfaces which 
cannot be seen through opaque materials. The use of 
broken lines indicates that the environmental structure 
or the portion of the article depicted in broken lines 
forms no part of the design, and is not to indicate the 
relative importance of parts of a design. 

In general, when broken lines are used, they should 
not intrude upon or cross the showing of the claimed 
design and should not be of heavier weight than the 
lines used in depicting the claimed design. When broken 
lines cross over the full line showing of the 
claimed design and are defined as showing environment, 
it is understood that the surface which lies 
beneath the broken lines is part of the claimed design. 
When the broken lines crossing over the design are 
defined as boundaries, it is understood that the area 
within the broken lines is not part of the claimed 
design. Therefore, when broken lines are used 
which 
cross over the full line showing of the design, it 
is critical that the description of the broken lines in the 
specification explicitly identifies their purpose so that 
the scope of the claim is clear. As it is possible that 
broken lines with different purposes may be included 
in a single application, the description must make 
a 
visual distinction between the two purposes; such as 
--The broken lines immediately adjacent the shaded 
areas represent the bounds of the claimed design 
while all other broken lines are directed to environment 
and are for illustrative purposes only; the broken 
lines form no part of the claimed design.-- Where a 
broken line showing of environmental structure must 
necessarily cross or intrude upon the representation of 
the claimed design and obscures a clear understanding 
of the design, such an illustration should be included 
as a separate figure in addition to the other figures 
which fully disclose the subject matter of the design. 
Further, surface shading should not be used on 
unclaimed subject matter shown in broken lines to 
avoid confusion as to the scope of the claim.

The following form paragraphs may be used, where 
appropriate, to notify applicant regarding the use of 
broken lines in the drawings.

¶ 15.50 Design Claimed Shown in Full Lines

The ornamental design which is being claimed must be shown 
in solid lines in the drawing. Dotted lines for the purpose of indicating 
unimportant or immaterial features of the design are not 
permitted. There are no portions of a claimed design which are 
immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 
USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 
988 (CCPA 1980).

¶ 15.50.01 Use of Broken Lines in Drawing

Environmental structure may be illustrated by broken lines in 
the drawing if clearly designated as environment in the specification. 
See 37 CFR 1.152 and MPEP § 1503.02, subsection III.



¶ 15.50.02 Description of Broken Lines

The following statement must be used to describe the broken 
lines on the drawing (MPEP § 1503.02, subsection III):

-- The broken line showing of [1] is for the purpose of illustrating 
[2] and forms no part of the claimed design. --

The above statement [3] inserted in the specification preceding 
the claim.

Examiner Note:

1.In bracket 1, insert name of structure.

2.In bracket 2, insert --portions of the “article”-- or --environmental 
structure--.

3.In bracket 3, insert --must be-- or --has been--.



¶ 15.50.03 Objectionable Use of Broken Lines In 
Drawings

Dotted lines or broken lines used for environmental structure 
should not cross or intrude upon the representation of the claimed 
design for which design protection is sought. Such dotted lines 
may obscure the claimed design and render the disclosure indefinite 
(35 U.S.C. 112).

¶ 15.50.04 Proper Drawing Disclosure With Use of Broken 
Lines

Where broken lines showing environmental structure obscure 
the full line disclosure of the claimed design, a separate figure 
showing the broken lines must be included in the drawing in addi





 

tion to the figures showing only claimed subject matter, 35 U.S.C. 
112, first paragraph.

¶ 15.50.05 Description of Broken Lines as Boundary of 
Design

The following statement must be used to describe the broken 
line boundary of a design (MPEP § 1503.02, subsection III):

-- The broken line(s) which define the bounds of the claimed 
design form no part thereof.--

IV.SURFACE TREATMENT

The ornamental appearance of a design for an article 
includes its shape and configuration as well as any 
indicia, contrasting color or materials, graphic representations, 
or other ornamentation applied to the article 
(“surface treatment”). Surface treatment must be 
applied to or embodied in an article of manufacture. 
Surface treatment, per se (i.e., not applied to or 
embodied in a specific article of manufacture), is not 
proper subject matter for a design patent under 35 
U.S.C. 171. Surface treatment may either be disclosed 
with the article to which it is applied or in which it is 
embodied and must be shown in full lines or in broken 
lines (if unclaimed) to meet the statutory requirement. 
See MPEP § 1504.01. The guidelines that apply for 
disclosing computer-generated icons apply equally to 
all types of surface treatment. See MPEP 
§
 
1504.01(a).

A disclosure of surface treatment in a design drawing 
or photograph will normally be considered as 
prima facie evidence that the inventor considered the 
surface treatment shown as an integral part of the 
claimed design. An amendment canceling two-dimensional 
surface treatment or reducing it to broken lines 
will be permitted if it is clear from the application that 
applicant had possession of the underlying configuration 
of the basic design without the surface treatment 
at the time of filing of the application. See In re 
Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 
1790 (Fed. Cir. 1998). Applicant may remove surface 
treatment shown in a drawing or photograph of a 
design without such removal being treated as new 
matter, provided that the surface treatment does not 
obscure or override the underlying design. The 
removal of three-dimensional surface treatment that is 
an integral part of the configuration of the claimed 
design, for example, removal of beading, grooves, and 
ribs, will introduce prohibited new matter as the 
underlying configuration revealed by this amendment 
would not be apparent in the application as originally 
filed. See MPEP § 1504.04, subsection II.

V.PHOTOGRAPHS AND COLOR DRAWINGS


Drawings are normally required to be submitted in 
black ink on white paper. See 37 CFR 1.84(a)(1). Photographs 
are acceptable only in applications in which 
the invention is not capable of being illustrated in an 
ink drawing or where the invention is shown more 
clearly in a photograph (e.g., photographs of ornamental 
effects are acceptable). See also 37 CFR 
1.81(c) and 1.83(c), and MPEP § 608.02.

Photographs submitted in lieu of ink drawings must 
comply with 37 CFR 1.84(b). Only one set of black 
and white photographs is required. Color photographs 
and color drawings may be submitted in design applications 
if filed with a petition under 37 CFR 
1.84(a)(2). Petitions to accept color photographs or 
color drawings will be considered by the Primary 
Examiners as delegated by the TC Director. A grantable 
petition under 37 CFR 1.84(a)(2) must explain 
that color drawings or color photographs are necessary 
because color is an integral part of the claimed 
design. Any other explanation as to why color drawings 
or color photographs are necessary will normally 
not be acceptable. A grantable petition must also be 
accompanied by: (1) the fee set forth in 37 CFR 
1.17(h); (2) three sets of the color 
photographs or 
color drawings; and (3) an amendment to the specification 
inserting the following statement --The file of 
this patent contains at least one drawing/photograph 
executed in color. Copies of this patent with color 
drawing(s)/photograph(s) will be provided by the 
Office upon request and payment of the necessary 
fee.-- See 37 CFR 1.84(a)(2)(iii) and MPEP 
§
 
608.02.  If the photographs are not of sufficient 
quality so that all details in the photographs are reproducible, 
this will form the basis of subsequent objection 
to the quality of the photographic disclosure. No 
application will be issued until objections directed to 
the quality of the photographic disclosure have been 
resolved and acceptable photographs have been submitted 
and approved by the examiner. If the details, 
appearance and shape of all the features and portions 
of the design are not clearly disclosed in the photographs, 
this would form the basis of a rejection of the 




 

claim under 35 U.S.C. 112, first and second paragraphs, 
as nonenabling and indefinite.

Photographs and ink drawings must not be combined 
in a formal submission of the visual disclosure 
of the claimed design in one application. The introduction 
of both photographs and ink drawings in a 
design application would result in a high probability 
of inconsistencies between corresponding elements on 
the ink drawings as compared with the photographs.

When filing informal photographs or informal 
drawings with the original application, a disclaimer 
included in the specification or on the photographs 
themselves may be used to disclaim any surface ornamentation, 
logos, written matter, etc. which form no 
part of the claimed design. See also MPEP § 1504.04, 
subsection II. 

Color photographs and color drawings may be submitted 
in design applications if filed with a petition 
under 37 CFR 1.84(a)(2). Color may also be shown in 
pen and ink drawings by lining the surfaces of the 
design for color in accordance with the symbols in 
MPEP § 608.02. If the formal drawing in an application 
is lined for color, the following statement should 
be inserted in the specification for clarity and to avoid 
possible confusion that the lining may be surface 
treatment --The drawing is lined for color.-- However, 
lining a surface for color may interfere with a clear 
showing of the design as required by 35 U.S.C. 112, 
first paragraph, as surface shading cannot be used to 
define the contours of the design.

If color photographs or color drawings are filed 
with the original application, color will be considered 
an integral part of the disclosed and claimed design. 
The omission of color in later filed formal photographs 
or drawings will be permitted if it is clear from 
the application that applicant had possession of the 
underlying configuration of the basic design without 
the color at the time of filing of the application. See In 
re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 
1788, 1790 (Fed. Cir. 1998) and MPEP 1504.04, subsection 
II. Note also 37 
CFR 1.152, which requires 
that the disclosure in formal photographs be limited to 
the design for the article claimed. 



¶ 15.05.041 Informal Color Drawing(s)/Photograph(s) 
Submitted

 Informal color photographs or drawings have been submitted 
for the purposes of obtaining a filing date. When formal drawings 
are submitted, any showing of color in a black and white drawing 
is limited to the symbols used to line a surface to show color 
(MPEP § 608.02). Lining entire surfaces of a design to show 
color(s) may interfere with a clear showing of the design as 
required by 35 U.S.C. 112 because surface shading cannot be used 
simultaneously to define the contours of those surfaces. However, 
a surface may be partially lined for color with a description that 
the color extends across the entire surface; this technique would 
allow for the use of shading on the rest of the surface showing the 
contours of the design (37 
CFR 1.152). In the alternative, a separate 
view, properly shaded to show the contours of the design but 
omitting the color(s), may be submitted if identified as shown 
only for clarity of illustration. 

In any drawing lined for color, the following descriptive statement 
must be inserted in the specification (the specific colors may 
be identified for clarity):

--The drawing is lined for color.--

However, some designs disclosed in informal color photographs/
drawings cannot be depicted in black and white drawings 
lined for color. For example, a design may include multiple shades 
of a single color which cannot be accurately represented by the 
single symbol for a specific color. Or, the color may be a shade 
other than a true primary or secondary color as represented by the 
drafting symbols and lining the drawing with one of the drafting 
symbols would not be an exact representation of the design as 
originally disclosed. In these situations, applicant may file a petition 
to accept formal color drawings or color photographs under 
37 CFR 1.84(a)(2).



¶ 15.45 Color Photographs/Drawings As Informal 
Drawings

For filing date purposes, in those design patent applications 
containing color photographs/drawings contrary to the requirement 
for ink drawings or black and white photographs, the Office 
of Initial Patent Examination has been authorized to construe the 
color photographs/drawings as informal drawings rather than to 
hold the applications incomplete as filed. By so doing, the Patent 
and Trademark Office can accept the applications without requiring 
applicants to file petitions to obtain the original deposit date as 
the filing date. However, color photographs or color drawings are 
not permitted in design applications in the absence of a grantable 
petition pursuant to 37 CFR 1.84(a)(2). Before the color photographs 
or color drawings in this application can be treated as formal 
drawings, applicant must submit [1].

Examiner Note:

In bracket 1, insert --a petition--, --the fee--, --statement in the 
specification--, --explanation of why color disclosure is neces





 

sary--, and -- three full sets of color photographs or color drawings--.


1504Examination [R-2]

In design patent applications, ornamentality, novelty, 
nonobviousness enablement and definiteness 
are necessary prerequisites to 
the grant of a 
patent. The inventive novelty or unobviousness 
resides in the ornamental shape or configuration of 
the article in which the design is embodied or the surface 
ornamentation which is applied to or embodied 
in the design.

Novelty and nonobviousness of a design claim 
must generally be determined by a search in the pertinent 
design classes. It is also mandatory that the 
search be extended to the mechanical classes encompassing 
inventions of the same general type. Catalogs 
and trade journals as well as available foreign patent 
databases are also to be consulted.

If the examiner determines that the claim of the 
design patent application does not satisfy the statutory 
requirements, the examiner will set forth in detail, and 
may additionally summarize, the basis for all rejections 
in an Official action. If a reply to an Office 
action overcomes a rejection either by way of an 
amendment to the claim or by providing convincing 
arguments that the rejection should be withdrawn, that 
rejection must be indicated as withdrawn in the next 
Office action, unless such action is a notice of 
allowability. Likewise, any amendment to the specification 
or claim, or new drawing or drawing correction 
submitted in reply to an objection or objections in an 
Office action must be acknowledged in the next 
Office action, unless such action is a notice of 
allowability. When an examiner determines that the 
claim in a design application is patentable under all 
statutory requirements, but formal matters still need to 
be addressed and corrected prior to allowance, an Ex 
parte Quayle action will be sent to applicant indicating 
allowability of the claim and identifying the necessary 
corrections. 

¶ 15.19.01 Summary Statement of Rejections

The claim stands rejected under [1].

Examiner Note:

1.Use as summary statement of rejection(s) in Office action.

2.In bracket 1, insert appropriate basis for rejection, i.e., statutory 
provisions, etc.

¶ 15.58 Claimed Design Is Patentable (Ex parte Quayle 
Actions)

The claimed design is patentable over the references cited.

¶ 15.72 Quayle Action

This application is in condition for allowance except for the 
following formal matters: [1].

Prosecution on the merits is closed in accordance with the 
practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.

A shortened statutory period for reply to this action is set to 
expire TWO MONTHS from the mailing date of this letter.

If it is determined that a rejection of the claim 
should be given after a reply to a Quayle action, the 
indication of allowability set forth in the previous 
action must be withdrawn and prosecution reopened 
using the following form paragraph:

¶ 15.90 Indication of allowability withdrawn

 The indication of allowability set forth in the previous action 
is withdrawn and prosecution is reopened in view of the following 
new ground of rejection.



With respect to pro se design applications, the 
examiner should notify applicant in the first Office 
action that it may be desirable for applicant to employ 
the services of a registered patent attorney or agent to 
prosecute the application. Applicant should also be 
notified that the U.S. Patent and Trademark Office 
cannot aid in the selection of an attorney or agent. If it 
appears that patentable subject matter is present and 
the disclosure of the claimed design complies with the 
requirements of 35 U.S.C.112, the examiner should 
include a copy of the “Guide To Filing A Design 
Patent Application” with the first Office action and 
notify applicant that it may be desirable to employ the 
services of a professional patent draftsperson familiar 
with design practice to prepare the formal drawings. 
Applicant should also be notified that the U.S. Patent 
and Trademark Office cannot aid in the selection of a 
draftsperson. The following form paragraph, where 
appropriate, may be used.

¶ 15.66 Employ Services of Patent Attorney or Agent 
(Design Application Only)

As the value of a design patent is largely dependent upon the 
skillful preparation of the drawings and specification, applicant 
might consider it desirable to employ the services of a registered 
patent attorney or agent. The U.S. Patent and Trademark Office 
cannot aid in the selection of an attorney or agent.

Applicant is advised of the availability of the publication 
“Attorneys and Agents Registered to Practice Before the U.S. 
Patent and Trademark Office.” This publication is for sale by the 




 

Superintendent of Documents, U.S. Government Printing Office, 
Washington, D.C. 20402.

¶ 15.66.01 Employ Services of Professional Patent 
Draftsperson (Design Application Only)

As the value of a design patent is largely dependent upon the 
skillful preparation of the drawings, applicant might consider it 
desirable to employ the services of a professional patent draftsperson 
familiar with design practice. The U.S. Patent and Trademark 
Office cannot aid in the selection of a draftsperson. 

Examiner Note:

This form paragraph should only be used in pro se applications 
where it appears that patentable subject matter is present and the 
disclosure of the claimed design complies with the requirements 
of 35 U.S.C. 112.

1504.01Statutory Subject Matter forDesigns 

35 U.S.C. 171. Patents for designs.

Whoever invents any new, original, and ornamental design for 
an article of manufacture may obtain a patent therefor, subject to 
the conditions and requirements of this title.

The provisions of this title relating to patents for inventions 
shall apply to patents for designs, except as otherwise provided. 

The language “new, original and ornamental design 
for an article of manufacture” set forth in 35 U.S.C. 
171 has been interpreted by the case law to include at 
least three kinds of designs: 

(A)a design for an ornament, impression, print, 
or picture applied to or embodied in an article of manufacture 
(surface indicia); 

(B)a design for the shape or configuration of an 
article of manufacture; and 

(C)a combination of the first two categories.

See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 
1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. 
Pat. App. & Int. 1992). 

A picture standing alone is not patentable 
under 
35 
U.S.C. 171. The factor which distinguishes 
statutory design subject matter from mere picture or 
ornamentation, per se (i.e., abstract design), is the 
embodiment of the design in an article of manufacture. 
Consistent with 35 
U.S.C. 171, case law and 
USPTO practice, the design must be shown as applied 
to or embodied in an article of manufacture. 

A claim to a picture, print, impression, etc. per se, 
that is not applied to or embodied in an article of manufacture 
should be rejected under 35 U.S.C. 171 as 
directed to nonstatutory subject matter. The following 
paragraphs may be used. 

¶ 15.07.01 Statutory Basis, 35 U.S.C. 171

The following is a quotation of 35 U.S.C. 171:

Whoever invents any new, original, and ornamental 
design for an article of manufacture may obtain a patent 
therefor, subject to the conditions and requirements of this 
title.

The provisions of this title relating to patents for inventions 
shall apply to patents for designs, except as otherwise 
provided.

¶ 15.09 35 U.S.C. 171 Rejection

The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory 
subject matter because the design is not shown embodied 
in or applied to an article.

Examiner Note:

This rejection should be used when the claim is directed to surface 
treatment which is not shown with an article in either full or 
broken lines. 

¶ 15.44 Design Inseparable From Article to Which Applied

Design is inseparable from the article to which it is applied, 
and cannot exist alone merely as a scheme of ornamentation. It 
must be a definite preconceived thing, capable of reproduction, 
and not merely the chance result of a method or of a combination 
of functional elements (35 U.S.C. 171; 35 U.S.C. 112, first and 
second paragraphs). See Blisscraft of Hollywood v. United Plastics 
Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 
F.2d 694, 131 USPQ 55 (2d Cir. 1961).

Form paragraphs 15.38 and 15.40 may be used in a 
second or subsequent action, where appropriate (see 
MPEP § 1504.02).

1504.01(a)Computer-Generated Icons[R-5]

To be directed to statutory subject matter, design 
applications for computer-generated icons must comply 
with the “article of manufacture” requirement of 
35 U.S.C. 171.

I.GUIDELINES FOR EXAMINATION OF 
DESIGN PATENT APPLICATIONS FOR 
COMPUTER-GENERATED ICONS

The following guidelines have been developed to 
assist USPTO personnel in determining whether 
design patent applications for computer-generated 
icons comply with the “article of manufacture” 
requirement of 35 U.S.C. 171.




 

A.General Principle Governing Compliance 
With the “Article of Manufacture” Requirement


Computer-generated icons, such as full screen 
displays 
and individual icons, are 2-dimensional 
images which alone are surface ornamentation. See, 
e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. 
App. & Int. 1992) (computer-generated icon alone is 
merely surface ornamentation). The USPTO considers 
designs for computer-generated icons embodied in 
articles of manufacture to be statutory subject matter 
eligible for design patent protection under 35 U.S.C. 
171. Thus, if an application claims a computer-generated 
icon shown on a computer screen, monitor, other 
display panel, or a portion thereof, the claim complies 
with the “article of manufacture” requirement of 35 
U.S.C. 171. Since a patentable design is inseparable 
from the object to which it is applied and cannot exist 
alone merely as a scheme of surface ornamentation, 
a 
computer-generated icon must be embodied in a 
computer screen, monitor, other display panel, or portion 
thereof, to satisfy 35 U.S.C. 171. See MPEP 
§
 
1502.

“We do not see that the dependence of the existence 
of a design on something outside itself is a reason for 
holding it is not a design ‘for an article of manufacture.’ 
” In re Hruby, 373 F.2d 997, 1001, 153 USPQ 
61, 66 (CCPA 1967) (design of water fountain patentable 
design for an article of manufacture). The dependence 
of a computer-generated icon on a central 
processing unit and computer program for its existence 
itself is not a reason for holding that the design is 
not for an article of manufacture.

B.Procedures for Evaluating Whether Design 
Patent Applications Drawn to Computer-
Generated Icons Comply With the “Article of 
Manufacture” Requirement

USPTO personnel shall adhere to the following 
procedures when reviewing design patent applications 
drawn to computer-generated icons for compliance 
with the “article of manufacture” requirement of 
35 
U.S.C. 171.

(A)Read the entire disclosure to determine what 
the applicant claims as the design and to determine 
whether the design is embodied in an article of manufacture. 
37 CFR 1.71 and 1.152-1.154.

Since the claim must be in formal terms to the 
design “as shown, or as shown and described,” the 
drawing provides the best description of the claim. 
37 
CFR 1.153.

(1)Review the drawing to determine whether a 
computer screen, monitor, other display panel, or portion 
thereof, is shown. 37 CFR 1.152. 

Although a computer-generated icon may be 
embodied in only a portion of a computer screen, 
monitor, or other display panel, the drawing “must 
contain a sufficient number of views to constitute a 
complete disclosure of the appearance of the article.” 
37 CFR 1.152. In addition, the drawing must comply 
with 37 CFR 1.84.

(2)Review the title to determine whether it 
clearly describes the claimed subject matter. 37 CFR 
1.153. 

The following titles do not adequately describe 
a design for an article of manufacture under 35 U.S.C. 
171: “computer icon”; or “icon.” On the other hand, 
the following titles do adequately describe a design 
for an article of manufacture under 35 U.S.C. 171: 
“computer screen with an icon”; “display panel with a 
computer icon”; “portion of a computer screen with 
an icon image”; “portion of a display panel with a 
computer icon image”; or “portion of a monitor displayed 
with a computer icon image.”

(3)Review the specification to determine 
whether a characteristic feature statement is present. 
37 CFR 1.71. If a characteristic feature statement is 
present, determine whether it describes the claimed 
subject matter as a computer-generated icon embodied 
in a computer screen, monitor, other display panel, 
or portion thereof. See McGrady v. Aspenglas Corp., 
487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) 
(descriptive statement in design patent application 
narrows claim scope). 

(B)If the drawing does not depict a computer-
generated icon embodied in a computer screen, monitor, 
other display panel, or a portion thereof, in either 
solid or broken lines, reject the claimed design under 
35 U.S.C. 171 for failing to comply with the article of 
manufacture requirement. 

(1)If the disclosure as a whole does not suggest 
or describe the claimed subject matter as a computer-
generated icon embodied in a computer screen, 
monitor, other display panel, or portion thereof, indicate 
that: 




 

(a)The claim is fatally defective under 
35 
U.S.C. 171; and 

(b)Amendments to the written description, 
drawings and/or claim attempting to overcome the 
rejection will ordinarily be entered, however, any new 
matter will be required to be canceled from the written 
description, drawings and/or claims. If new matter 
is added, the claim should be rejected under 35 U.S.C. 
112, first paragraph.

(2)If the disclosure as a whole suggests or 
describes the claimed subject matter as a computer-
generated icon embodied in a computer screen, monitor, 
other display panel, or portion thereof, indicate 
that the drawing may be amended to overcome the 
rejection under 35 U.S.C. 171. Suggest amendments 
which would bring the claim into compliance with 
35 
U.S.C. 171. 

(C)Indicate all objections to the disclosure for 
failure to comply with the formal requirements of the 
Rules of Practice in Patent Cases. 37 CFR 1.71, 1.81-
1.85, and 1.152-1.154. Suggest amendments which 
would bring the disclosure into compliance with the 
formal requirements of the Rules of Practice in Patent 
Cases.

(D)Upon reply by applicant: 

(1)Enter any amendments; and

(2)Review all arguments and the entire record, 
including any amendments, to determine whether the 
drawing, title, and specification clearly disclose a 
computer-generated icon embodied in a computer 
screen, monitor, other display panel, or portion 
thereof.

(E)If, by a preponderance of the evidence (see In 
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 
1444 (Fed. Cir. 1992) (“After evidence or argument is 
submitted by the applicant in response, patentability is 
determined on the totality of the record, by a preponderance 
of evidence with due consideration to persuasiveness 
of argument.”)), the applicant has established 
that the computer-generated icon is embodied in a 
computer screen, monitor, other display panel, or portion 
thereof, withdraw the rejection under 35 U.S.C. 
171. 

II.EFFECT OF THE GUIDELINES ON 
PENDING DESIGN APPLICATIONS 
DRAWN TO COMPUTER-GENERATED 
ICONS

USPTO personnel shall follow the procedures set 
forth above when examining design patent applications 
for computer-generated icons pending in the 
USPTO as of April 19, 1996.

III.TREATMENT OF TYPE FONTS

Traditionally, type fonts have been generated by 
solid blocks from which each letter or symbol was 
produced. Consequently, the USPTO has historically 
granted design patents drawn to type fonts. USPTO 
personnel should not reject claims for type fonts 
under 35 
U.S.C. 171 for failure to comply with the 
“article of manufacture” requirement on the basis that 
more modern methods of typesetting, including computer-
generation, do not require solid printing blocks.



IV.CHANGEABLE COMPUTER GENERATED 
ICONS

Computer generated icons including images that 
change in appearance during viewing may be the subject 
of a design claim. Such a claim may be shown in 
two or more views. The images are understood as 
viewed sequentially, no ornamental aspects are attributed 
to the process or period in which one image 
changes into another. A descriptive statement must be 
included in the specification describing the transitional 
nature of the design and making it clear that the 
scope of the claim does not include anything that is 
not shown. Examples of such a descriptive statement 
are as follows:

“The subject matter in this patent includes a process 
or period in which an image changes into another 
image. This process or period forms no part of the 
claimed design;” or

“The appearance of the transitional image sequentially 
transitions between the images shown in Figs. 1-
8. The process or period in which one image transitions 
to another image forms no part of the claimed 
design;” or

“The appearance of the transitional image sequentially 
transitions between the images shown in Figs. 1-
8. No ornamental aspects are associated with the process 
or period in which one image transitions to 
another image.”

1504.01(b)Design Comprising Multiple 
Articles or Multiple Parts 




 

Embodied in a Single Article[R-5]

While the claimed design must be embodied in an 
article of manufacture as required by 35 U.S.C. 171, it 
may encompass multiple articles or multiple parts 
within that article. Ex parte Gibson, 20 USPQ 249 
(Bd. App. 1933). When the design involves multiple 
articles, the title must identify a single entity of 
manufacture made up by the parts (e.g., set, pair, combination, 
unit, assembly). A descriptive statement 
should be included in the specification making it clear 
that the claim is directed to the collective appearance 
of the articles shown. If the separate parts are shown 
in a single view, the parts must be shown embraced by 
a bracket “}”. The claim may also involve multiple 
parts of a single article, where the article is shown in 
broken lines and various parts are shown in solid 
lines. In this case, no bracket is needed. See MPEP 
§
 
1503.01.

1504.01(c)Lack of Ornamentality [R-5]

I.FUNCTIONALITY VS. ORNAMENTALITY


An ornamental feature or design has been defined 
as one which was “created for the purpose of ornamenting” 
and cannot be the result or “merely a by-
product” of functional or mechanical considerations. 
In re Carletti, 328 F.2d 1020, 140 USPQ 653, 
654 
(CCPA 1964); Blisscraft of Hollywood v. United 
Plastic Co., 189 F. Supp. 333, 337, 127 USPQ 452, 
454 (S.D.N.Y. 1960), aff’d, 294 F.2d 694, 131 USPQ 
55 (2d Cir. 1961). It is clear that the ornamentality of 
the article must be the result of a conscious act by the 
inventor, as 35 U.S.C. 171 requires that a patent for a 
design be given only to “whoever invents any new, 
original, and ornamental design for an article of manufacture.” 
Therefore, for a design to be ornamental 
within the requirements of 35 
U.S.C. 171, it must be 
“created for the purpose of ornamenting.” In re Carletti, 
328 F.2d 1020, 1022, 140 USPQ 653, 
654 
(CCPA 1964).

To be patentable, a design must be “primarily ornamental.” 
“In determining whether a design is primarily 
functional or primarily ornamental the claimed 
design is viewed in its entirety, for the ultimate question 
is not the functional or decorative aspect of each 
separate feature, but the overall appearance of the article, 
in determining whether the claimed design is dictated 
by the utilitarian purpose of the article.” L. A. 
Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 
1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The 
court in Norco Products, Inc. v. Mecca Development, 
Inc., 617 F.Supp. 1079, 1080, 227 USPQ 724, 725 (D. 
Conn. 1985), held that a “primarily functional invention 
is not patentable” as a design. 

A determination of ornamentality is not a quantitative 
analysis based on the size of the ornamental feature 
or features but rather a determination based on 
their ornamental contribution to the design as a whole.

While ornamentality must be based on the entire 
design, “[i]n determining whether a design is primarily 
functional, the purposes of the particular elements 
of the design necessarily must be considered.” Power 
Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 
231 USPQ 774, 778 (Fed. Cir. 1986). The court in 
Smith v. M & B Sales & Manufacturing, 
13 
USPQ2d 
2002, 2004 (N. D. Cal. 1990), states that 
if “significant decisions about how to put it [the item] 
together and present it in the marketplace were 
informed by primarily ornamental considerations”, 
this information may establish the ornamentality of a 
design. 

“However, a distinction exists between the functionality 
of an article or features thereof and the functionality 
of the particular design of such article or 
features thereof that perform a function.” Avia Group 
International Inc. v. L. A. Gear California Inc., 
853 
F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. 
Cir. 1988). The distinction must be maintained 
between the ornamental design and the article in 
which the design is embodied. The design for the article 
cannot be assumed to lack ornamentality merely 
because the article of manufacture would seem to be 
primarily functional.

II.ESTABLISHING A PRIMA FACIE BASIS 
FOR REJECTIONS UNDER 35 U.S.C. 171

To properly reject a claimed design under 35 U.S.C. 
171 on the basis of a lack of ornamentality, an examiner 
must make a prima facie showing that the 
claimed design lacks ornamentality and provide a sufficient 
evidentiary basis for factual assumptions relied 
upon in such showing. The court in In re Oetiker, 977 
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 




 

1992), stated that “the examiner bears the initial burden, 
on review of the prior art or on any other ground, 
of presenting a prima facie case of unpatentability.”

The proper evidentiary basis for a rejection under 
35 U.S.C. 171 that a claim is lacking in ornamentality 
is an evaluation of the appearance of the design itself. 
The examiner’s knowledge of the art, a reply to a letter 
of inquiry, a brochure emphasizing the functional/
mechanical features of the design, the specification of 
an analogous utility patent (the applicant’s or another 
inventor), or information provided in the specification 
may be used to supplement the analysis of the design. 
If a design is embodied in a specific mechanical article, 
the analysis that the design lacks ornamentality 
because its appearance is dictated by functional 
requirements should be supported by reference to utility 
patents or some other source of information about 
the function of the design. If the design is embodied in 
an article that has a more general use, such as a clip, 
the analysis and explanation as to why the design 
lacks ornamentality should be detailed and specific. 
The examiner’s contention that the specific appearance 
of the claimed design lacks ornamentality may 
be supported by the holding of the court in In re Carletti 
et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 
1964), that a design to be patentable must be “created 
for the purpose of ornamenting” the article in which it 
is embodied. The presence or lack of ornamentality 
must be made on a case by case basis.

Knowledge that the article would be hidden during 
its end use based on the examiner’s experience in a 
given art or information that may have been submitted 
in the application itself would not be considered 
prima facie evidence of the functional nature of the 
design. See Seiko Epson Corp v. Nu-Kote Int’l Inc., 
190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999). 
“Visibility during an article’s ‘normal use’ is not a 
statutory requirement of §171, but rather a guideline 
for courts to employ in determining whether the patented 
features are ‘ornamental’.” Larson v. Classic 
Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 
1988). If there is sufficient evidence to show that a 
specific design “is clearly intended to be noticed during 
the process of sale and equally clearly intended to 
be completely hidden from view in the final use,” it is 
not necessary that a rejection be made under 35 
U.S.C. 171. In re Webb, 916 F.2d 1553, 1558, 16 
USPQ2d 1433, 1436 (Fed. Cir. 1990). The mere fact 
that an article would be hidden during its ultimate end 
use is not the basis for a rejection under 35 U.S.C. 
171, but this information provides additional evidence 
to be used in support of the contention that the design 
lacks ornamentality. The only basis for rejecting a 
claim under 35 U.S.C. 171 as lacking in ornamentality 
is an evaluation of the design itself in light of additional 
information, such as that identified above.

Examples of proper evidentiary basis for a rejection 
under 35 U.S.C. 171 that a claim is lacking in ornamentality 
would be: (A) common knowledge in the 
art; (B) the appearance of the design itself; (C) the 
specification of a related utility patent; or (D) information 
provided in the specification. 

A rejection under 35 U.S.C. 171 for lack of ornamentality 
must be supported by evidence and rejections 
should not be made in the absence of such 
evidence.

III.REJECTIONS MADE UNDER 35 U.S.C. 
171

Rejections under 35 U.S.C. 171 for lack of ornamentality 
based on a proper prima facie showing fall 
into two categories: 

(A)a design visible in its ultimate end use which 
is primarily functional based on the evidence of 
record; or

(B)a design not visible in its normal and intended 
use as evidence that its appearance is not a matter of 
concern. In re Stevens, 173 F.2d 1015, 81 USPQ 362 
(CCPA 1949); In re Webb, 916 F.2d 1553, 1558, 16 
USPQ2d 1433, 1436 (Fed. Cir. 1990).

When the examiner has established a proper prima 
facie case of lack of ornamentality, “the burden of 
coming forward with evidence or argument shifts to 
the applicant.” In re Oetiker, 977 F.2d 1443, 1445, 
24 
USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection 
under 35 U.S.C. 171 for lack of ornamentality may be 
overcome by providing evidence from the inventor 
himself or a representative of the company that commissioned 
the design that there was an intent to create 
a design for the “purpose of ornamenting.” In re Carletti, 
328 F.2d 1020, 1022, 140 USPQ 653, 
654 
(CCPA 1964). Attorney’s arguments are not a 
substitute for evidence. Once a proper prima faciecase of lack of ornamentality is established by the 
examiner, it is incumbent upon applicant to come 




 

forth with countervailing evidence to rebut the rejection 
made by the examiner.  Ex parte Webb, 30 
USPQ2d 1064, 1067-68 (Bd. Pat. App. & Int. 1993). 
Form paragraph 15.08 or 15.08.01, where appropriate, 
may be used to reject a claim under 35 U.S.C. 171 for 
lack of ornamentality.



¶ 15.08 Lack of Ornamentality (Article Visible in End Use)

The claim is rejected under 35 U.S.C. 171 as being directed to 
nonstatutory subject matter in that it lacks ornamentality. To be 
patentable, a design must be “created for the purpose of ornamenting” 
the article in which it is embodied. See In re Carletti, 328 
F.2d 1020, 140 USPQ 653 (CCPA 1964).

The following evidence establishes a prima facie case of a lack 
of ornamentality: [1]

Evidence that demonstrates the design is ornamental may be 
submitted from the applicant in the form of an affidavit or declaration 
under 37 CFR 1.132:

(a) stating the ornamental considerations which entered into 
the design of the article; and

(b) identifying what aspects of the design meet those considerations.


An affidavit or declaration under 37 CFR 1.132 may also be 
submitted from a representative of the company, which commissioned 
the design, to establish the ornamentality of the design by 
stating the motivating factors behind the creation of the design.

Attorney arguments are not a substitute for evidence to establish 
the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 
1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

In bracket 1, insert source of evidence of lack of ornamentality, 
for example, a utility patent, a brochure, a response to a letter of 
inquiry, etc.

¶ 15.08.01 Lack of Ornamentality (Article Not Visible in its 
Normal and Intended Use)

The claim is rejected under 35 U.S.C. 171 as being directed to 
nonstatutory subject matter in that the design lacks ornamentality 
since it appears there is no period in the commercial life of applicant’s 
[1] when its ornamentality may be a matter of concern. In 
re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 
1990); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).

The following evidence establishes a prima facie case of lack 
of ornamentality: [2]

In order to overcome this rejection, two types of evidence are 
needed:

(1) Evidence to demonstrate there is some period in the commercial 
life of the article embodying the claimed design when its 
ornamentality is a matter of concern. Such evidence may include 
a showing of a period in the life of the design when the ornamentality 
of the article may be a matter of concern to a purchaser during 
the process of sale. An example of this type of evidence is a 
sample of sales literature such as an advertisement or a catalog 
sheet which presents the appearance of the article as ornamental 
and not merely as a means of identification or instruction; and

(2) Evidence to demonstrate the design is ornamental. This 
type of evidence should demonstate “thought of ornament” in the 
design and should be presented in the form of an affidavit or declaration 
under 37 CFR 1.132 from the applicant:

(a) stating the ornamental considerations which entered into 
the design of the article; and

(b) identifying what aspects of the design meet those considerations.


An affidavit or declaration under 37 CFR 1.132 may also be 
submitted from a representative of the company, which commissioned 
the design, to establish the ornamentality of the design by 
stating the motivating factors behind the creation of the design.

Attorney arguments are not a substitute for evidence to establish 
the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 
1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

1.In bracket 1, insert the name of the article in which the 
design is embodied.

2.In bracket 2, insert source of evidence of the article’s design 
being of no concern, for example, an analysis of a corresponding 
utility patent, a brochure, a response to a letter of inquiry, etc. 



IV.OVERCOMING A 35 U.S.C. 171REJECTION BASED ON LACK OF 
ORNAMENTALITY

A rejection under 35 U.S.C. 171 based on lack of 
ornamentality may be overcome by the following:

(A)An affidavit or declaration under 37 CFR 
1.132 submitted from the applicant or a representative 
of the company, which commissioned the design, 
explaining specifically and in depth, which features or 
area of the claimed design were created with:

(1)a concern for enhancing the saleable value 
or increasing the demand for the article. Gorham 
Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 
(1871), or

(2)a concern primarily for the esthetic appearance 
of the article;

(B)Advertisements which emphasize the ornamentality 
of the article embodying the claimed design 
may be submitted as evidence to rebut the rejection. 
See Berry Sterling Corp. v. Pescor Plastics Inc., 122 
F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);

(C)Evidence that the appearance of the design is 
ornamental may be shown by distinctness from the 
prior art as well as an attempt to develop or to maintain 
consumer recognition of the article embodying 




 

the design. Seiko Epson Corp. v. Nu-Kote Int’l Inc., 
190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);

(D)Evidence may be provided by a representative 
of the company, which commissioned the design, to 
establish the ornamentality of the design by stating 
the motivating factors behind the creation of the 
design;

(E)When the rejection asserts that the design is 
purely dictated by functional considerations, evidence 
may be presented showing possible alternative 
designs which could have served the same function 
indicating that the appearance of the claimed design 
was not purely dictated by function. L.A. Gear Inc. v. 
Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 
1913 (Fed. Cir. 1993);

(F)When the rejection asserts no period in the 
commercial life of the article when its ornamentality 
may be a matter of concern, the applicant must establish 
that the “article’s design is a ‘matter of concern’ 
because of the nature of its visibility at some point 
between its manufacture or assembly and its ultimate 
use.” In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 
1433, 1436 (Fed. Cir. 1990).

Attorney arguments are not a substitute for evidence 
to establish the ornamentality of the claim. Ex 
parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & 
Inter. 1993).

V. EVALUATION OF EVIDENCE SUBMITTED 
TO OVERCOME A REJECTION UNDER 
35 
U.S.C. 171

In order to overcome a rejection of the claim under 
35 
U.S.C. 171 as lacking in ornamentality, applicant 
must provide evidence that he or she created the 
design claimed for the “purpose of ornamenting” as 
required by the court in In re Carletti, 328 F.2d 
1020,
 
1022, 140 USPQ 653, 654 (CCPA 1964).  

The mere display of the article embodying the 
design at trade shows or its inclusion in catalogs is 
insufficient to establish ornamentality. Ex parte Webb, 
30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). 
There must be some clear and specific indication of 
the ornamentality of the design in this evidence for it 
to be given probative weight in overcoming the prima 
facie lack of ornamentality. Berry Sterling Corp. v. 
Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 
(Fed. Cir. 1997).

The examiner must  evaluate  evidence submitted 
by the applicant in light of the design as a whole 
to decide if the claim is primarily ornamental. It is 
important to be aware that this determination is not 
based on the size or amount of the features identified 
as ornamental but rather on their influence on the 
overall appearance of the design. 

In a rejection of a claim under 35 U.S.C. 171 in 
which some of the evidentiary basis for the rejection 
is that the design would be hidden during its end use, 
the applicant must establish that the “article’s design 
is a ‘matter of concern’ because of the nature of its 
visibility at some point between its manufacture or 
assembly and its ultimate use.” In re Webb, 916 F.2d 
1553, 1558, 16 
USPQ2d 1433, 1436 (Fed. Cir. 1990). 
This concern may be shown by the submission of evidence 
that the appearance of the article was of concern 
during its period of commercial life by 
declarations from prospective/actual customers/users 
attesting that the ornamentality of the article was of 
concern to them. Unless applicant is directly involved 
with the sale of the design or works with users of the 
design, he or she cannot provide factual evidence as to 
the reasons for the purchase/selection of the article 
embodying the design.

Once applicant has proven that there is a period of 
visibility during which the ornamentality of the 
design is a “matter of concern,” it is then necessary to 
determine whether the claimed design was primarily 
ornamental during that period. Larson v. Classic 
Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N. D. Ill. 
1988). The fact that a design would be visible during 
its commercial life is not sufficient evidence that the 
design was “created for the purpose of ornamenting” 
as required by the court in In re Carletti, 328 F.2d 
1020, 1022, 140 USPQ 653, 654 (CCPA 1964). 
Examiners should follow the standard for determining 
ornamentality as outlined above.

“The possibility of encasing a heretofore concealed 
design element in a transparent cover for no reason 
other than to avoid this rule cannot avoid the visibility 
[guideline]... , lest it become meaningless.” Norco 
Products Inc. v. Mecca Development Inc., 617 F. 
Supp. 1079, 1081, 227 USPQ 724, 726 (D. Conn. 
1985). Applicant cannot rely on mere possibilities to 
provide factual evidence of ornamentality for the 
claimed design.




 

The requirements for visibility of the design andthat it was created for the “purpose of ornamenting” 
must be met for a rejection under 35 U.S.C. 171 to be 
overcome if the design would be hidden during its end 
use.

1504.01(d)Simulation

35 U.S.C. 171 requires that a design to be patentable 
be “original.” Clearly, a design which simulates 
an existing object or person is not original as required 
by the statute. The Supreme Court in Gorham Manufacturing 
Co. v. White, 81 U.S. (14 Wall) 511 (1871), 
described a design as “the thing invented or produced, 
for which a patent is given.” “The arbitrary chance 
selection of a form of a now well known and celebrated 
building, to be applied to toys, inkstands, paper 
- weights, etc. does not, in my opinion, evince 
the 
slightest exercise of invention....” Bennage v. 
Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 
1876). This logic was reinforced by the CCPA in In 
re Smith, 25 USPQ 359, 360, 1935 C.D. 565, 566 
(CCPA 1935), which stated that “to take a natural 
form, in a natural pose, ... does not constitute invention” 
when affirming the rejection of a claim to a baby 
doll. This premise was also applied in In re Smith, 
25 
USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 
1935), which held that a “baby doll simulating the 
natural features...of a baby without embodying some 
grotesqueness or departure from the natural form” is 
not patentable.

Therefore, a claim directed to a design for an article 
which simulates a well known or naturally occurring 
object or person should be rejected under 35 U.S.C. 
171 as nonstatutory subject matter in that the claimed 
design lacks originality. Form paragraph 15.08.02should be used. However, when a claim is rejected on 
this basis, examiners should provide evidence, if possible, 
of the appearance of the object, person or naturally 
occurring form in question so that a comparison 
may be made to the claimed design. Form paragraph 
15.08.03 should be used. It would also be appropriate, 
if the examiner has prior art which anticipates or renders 
the claim obvious, to reject the claim under either 
35 U.S.C. 102 or 103(a) concurrently. In re Wise, 
340 
F.2d 982, 144 USPQ 354 (CCPA 1965).

¶ 15.08.02 Simulation (Entire Article)

The claim is rejected under 35 U.S.C. 171 as being directed to 
nonstatutory subject matter in that the design lacks originality. 
The design is merely simulating [1] which applicant himself did 
not invent. See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 
1935); In re Smith, 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); 
and Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159.

Examiner Note:

1.In bracket 1, insert the name of the article or person being 
simulated, e.g., the White House, Marilyn Monroe, an animal 
which is not stylized or caricatured in any way, a rock or shell to 
be used as paperweight, etc.

2.This form paragraph should be followed by form paragraph 
15.08.03 when evidence has been cited to show the article or person 
being simulated.

¶ 15.08.03 Explanation of evidence cited in support of 
simulation rejection

Applicant’s design has in no way departed from the natural 
appearance of [1]. This reference is not relied on in this rejection 
but is supplied merely as representative of the usual or typical 
appearance of [2] in order that the claim may be compared to that 
which it is simulating. 

Examiner Note:

1.In bracket 1, insert name of article or person being simulated 
and source (patent, publication, etc.).

2.In bracket 2, insert name of article or person being simulated.

1504.01(e)Offensive Subject Matter

Design applications which disclose subject matter 
which could be deemed offensive to any race, religion, 
sex, ethnic group, or nationality, such as those 
which include caricatures or depictions, should be 
rejected as nonstatutory subject matter under 
35 
U.S.C. 171. See also MPEP § 608. Form paragraph 
15.10 should be used.

¶ 15.10 Offensive Subject Matter

The disclosure, and therefore the claim in this application, is 
rejected as being offensive and therefore improper subject matter 
for design patent protection under 35 U.S.C. 171. Such subject 
matter does not meet the statutory requirements of 35 U.S.C. 171. 
Moreover, since 37 CFR 1.3 proscribes the presentation of papers 
which are lacking in decorum and courtesy, and this includes 
depictions of caricatures in the disclosure, drawings, and/or a 
claim which might reasonably be considered offensive, such subject 
matter as presented herein is deemed to be clearly contrary to 
37CFR 1.3. See MPEP § 608.




 

1504.02Novelty [R-2]

35 U.S.C. 102. Conditions for patentability; novelty and 
loss of right to patent.

A person shall be entitled to a patent unless —

(a)the invention was known or used by others in this country, 
or patented or described in a printed publication in this or a 
foreign country, before the invention thereof by the applicant for 
patent, or

(b)the invention was patented or described in a printed publication 
in this or a foreign country or in public use or on sale in 
this country, more than one year prior to the date of the application 
for patent in the United States, or

(c)he has abandoned the invention, or

(d)the invention was first patented or caused to be patented, 
or was the subject of an inventor’s certificate, by the applicant or 
his legal representatives or assigns in a foreign country prior to the 
date of the application for patent in this country on an application 
for patent or inventor’s certificate filed more than twelve months 
before the filing of the application in the United States, or



(e)the invention was described in — (1) an application for 
patent, published under section 122(b), by another filed in the 
United States before the invention by the applicant for patent or 
(2) a patent granted on an application for patent by another filed in 
the United States before the invention by the applicant for patent, 
except that an international application filed under the treaty 
defined in section 351(a) shall have the effects for the purposes of 
this subsection of an application filed in the United States only if 
the international application designated the United States and was 
published under Article 21(2) of such treaty in the English language; 
or

(f)he did not himself invent the subject matter sought to be 
patented, or

(g)(1)during the course of an interference conducted under 
section 135 or section 291, another inventor involved therein 
establishes, to the extent permitted in section 104, that before such 
person’s invention thereof the invention was made by such other 
inventor and not abandoned, suppressed, or concealed, or (2) 
before such person’s invention thereof, the invention was made in 
this country by another inventor who had not abandoned, suppressed, 
or concealed it. In determining priority of invention 
under this subsection, there shall be considered not only the 
respective dates of conception and reduction to practice of the 
invention, but also the reasonable diligence of one who was first 
to conceive and last to reduce to practice, from a time prior to conception 
by the other.

35 U.S.C. 172. Right of priority.

The right of priority provided for by subsections (a) through 
(d) of section 119 of this title and the time specified in section 
102(d) shall be six months in the case of designs. The right of priority 
provided for by section 119(e) of this title shall not apply to 
designs.

The standard for determining novelty under 
35 
U.S.C. 102 was set forth by the court in In re Bartlett, 
300 F.2d 942, 133 USPQ 204 (CCPA 1962). 
“The degree of difference [from the prior art] required 
to establish novelty occurs when the average observer 
takes the new design for a different, and not a modified, 
already-existing design.” 300 F.2d at 943, 
133 
USPQ at 205 (quoting Shoemaker, Patents For 
Designs, page 76). In design patent applications, the 
factual inquiry in determining anticipation over a 
prior art reference is the same as in utility patent 
applications. That is, the reference “must be identical 
in all material respects.” Hupp v. Siroflex of America 
Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 
1997).

The “average observer” test does not require that 
the claimed design and the prior art be from analogous 
arts when evaluating novelty. In re Glavas, 
230 
F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). 
Insofar as the “average observer” under 35 U.S.C. 102is not charged with knowledge of any art, the issue of 
analogousness of prior art need not be raised. This 
distinguishes 35 U.S.C. 102 from 35 
U.S.C. 103(a)
which requires determination of whether the claimed 
design would have been obvious to “a person of ordinary 
skill in the art.” 

When a claim is rejected under 35 U.S.C. 102 as 
being unpatentable over prior art, those features of the 
design which are functional and/or hidden during end 
use may not be relied upon to support patentability. In 
re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 
1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. 
R.I. 1958). Further, in a rejection of a claim under 
35 
U.S.C. 102, mere differences in functional considerations 
do not negate a finding of anticipation when 
determining design patentability. Black & Decker, Inc. 
v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. 
Ill. 1986).

It is not necessary for the examiner to cite or apply 
prior art to show that functional and/or hidden features 
are old in the art as long as the examiner has 
properly relied on evidence to support the prima facielack of ornamentality of these individual features. If 
applicant wishes to rely on functional or hidden features 
as a basis for patentability, the same standard for 
establishing ornamentality under 35 U.S.C. 171 must 
be applied before these features can be given any patentable 
weight. See MPEP § 1504.01(c).

In evaluating a statutory bar based on 35 U.S.C. 
102(b), the experimental use exception to a statutory 




 

bar for public use or sale (see MPEP § 2133.03(e)) 
does not usually apply for design patents. See In re 
Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 
1988). However, Tone Brothers, Inc. v. Sysco Corp., 
28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 
1994) held that “experimentation directed to functional 
features of a product also containing an ornamental 
design may negate what otherwise would be 
considered a public use within the meaning of section 
102(b).” See MPEP § 2133.03(e)(6). 

Registration of a design abroad is considered to be 
equivalent to patenting under 35 U.S.C. 119(a)-(d) 
and 35 
U.S.C. 102(d), whether or not the foreign grant 
is published. (See Ex parte Lancaster, 151 USPQ 713 
(Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 
(Bd. App. 1966); Appeal No. 239-48, Decided April 
30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte 
Appeal decided September 3, 1968, 866 O.G. 16 (Bd. 
App. 1966). The basis of this practice is that if the foreign 
applicant has received the protection offered in 
the foreign country, no matter what the protection is 
called (“patent,” “Design Registration,” etc.), if 
the 
United States application is timely filed, a claim 
for priority will vest. If, on the other hand, the U.S. 
application is not timely filed, a statutory bar arises 
under 35 
U.S.C. 102(d) as modified by 35 U.S.C. 172. 
In order for the filing to be timely for priority purposes 
and to avoid possible statutory bars, the U.S. 
design patent application must be made within 6 
months of the foreign filing. See also MPEP § 
1504.10.

The laws of each foreign country vary in one or 
more respects. 

The following table sets forth the dates on which 
design rights can be enforced in a foreign country 
(INID Code (24)) and thus, are also useable in a 
35 
U.S.C. 102(d) rejection as modified by 35 U.S.C. 
172. It should be noted that in many countries the date 
of registration or grant is the filing date.




 

 Country or Organization

Date(s) Which Can Also Be Used 
for 35 U.S.C. 102(d) Purposes1 
(INID Code (24))

 Comment

AT-Austria

Protection starts on the date of 
publication of the design in the 
official gazette

AU-Australia

Date of registration or grant which 
is the filing date

BG-Bulgaria

Date of registration or grant which 
is the filing date

BX-Benelux (Belgium, Luxembourg, 
and the Netherlands)

Date on which corresponding 
application became complete and 
regular according to the criteria 
set by the law

CA-Canada

Date of registration or grant

CH-Switzerland

Date of registration or grant which 
is the filing date

Minimum requirements: deposit 
application, object, and deposit fee

CL-Chile

Date of registration or grant

CU-Cuba

Date of registration or grant which 
is the filing date

CZ-Czech Republic

Date of registration or grant which 
is the filing date

DE-Germany

Date of registration or grant

The industrial design right can be 
enforced by a court from the date 
of registration although it is in 
force earlier (as from the date of 
filing—as defined by law).

DK-Denmark

Date of registration or grant which 
is the filing date

EG-Egypt

Date of registration or grant which 
is the filing date

ES-Spain

Date of registration or grant 

FI-Finland

Date of registration or grant which 
is the filing date

FR-France

Date of registration or grant which 
is the filing date








 

GB-United Kingdom

Date of registration or grant which 
is the filing date

Protection arises automatically 
under the Design Right provision 
when the design is created. Proof 
of the date of the design creation 
needs to be kept in case the design 
right is challenged. The protection 
available to designs can be 
enforced in the courts following 
the date of grant of the Certificate 
of Registration as of the date of 
registration which stems from the 
date of first filing of the design in 
the UK or, if a priority is claimed 
under the Convention, as another 
country. 

HU-Hungary

Date of registration or grant

With retroactive effect as from the 
filing date

JP-Japan

Date of registration or grant

KR-Republic of Korea

Date of registration or grant

MA-Morocco

Date of registration or grant which 
is the filing date

MC-Monaco

Date of registration or grant which 
is the filing date

Date of prior disclosure declared 
on deposit

NO-Norway

Date of registration or grant which 
is the filing date

OA-African Intellectual Property 
Organization (OAPI) (Benin, 
Burkina Faso, Cameroon, Central 
African Republic, Chad, Congo, 
Cote d`Ivoire, Gabon, Guinea, 
Mali, Mauritania, Niger, Senegal, 
and Togo)

Date of registration or grant which 
is the filing date

PT-Portugal

Date of registration or grant

RO-Romania

Date of registration or grant which 
is the filing date

RU-Russian Federation

Date of registration or grant which 
is the filing date








 

SE-Sweden

Date of registration or grant

TN-Tunisia

Date of registration or grant which 
is the filing date

TT-Trinidad and Tobago

Date of registration or grant which 
is the filing date

WO-World Intellectual Property 
Organization (WIPO)

Subject to Rule 14.2 of the Regulations 
(on defects), the International 
Bureau enters the 
international deposit in the International 
Register on the date on 
which it has in its possession the 
application together with the items 
required. Reproductions, samples, 
or models pursuant to Rule 12, and 
the prescribed fees.

1Based on information taken from the “Survey of Filing Procedures and Filing Requirements, as well as of 
Examination Methods and Publication Procedures, Relating to Industrial Designs” as adopted by the PCIPI 
Executive Coordination Committee of the World Intellectual Property Organization (WIPO) at its fifteenth 
session on November 25, 1994.








 

Rejections under 35 U.S.C. 102(d) as modified by 
35 
U.S.C. 172 should only be made when the examiner 
knows that the application for foreign registration/
patent has actually issued before the U. S. filing 
date based on an application filed more than six (6) 
months prior to filing the application in the United 
States. If the grant of a registration/patent based on 
the foreign application is not evident from the record 
of the U. S. application or from information found 
within the preceding charts, then the statement below 
should be included in the first action on the merits of 
the application:

¶ 15.03.01 Foreign Filing More Than 6 Months Before 
U.S. Filing

Acknowledgment is made of the [1] application identified in 
the declaration which was filed more than six months prior to the 
filing date of the present application. Applicant is reminded that 
if the [2] application matured into a form of patent protection 
before the filing date of the present application it would constitute 
a statutory bar to the issuance of a design patent in the United 
States under 35 U.S.C. 102(d) in view of 35 
U.S.C. 172. 

Examiner Note:

In brackets 1 and 2, insert the name of country where application 
was filed. 

Form paragraphs for use in rejections under 35 
U.S.C. 102 are set forth below.

¶ 15.11 35 U.S.C. 102(a) Rejection

The claim is rejected under 35 U.S.C. 102(a) as being clearly 
anticipated by [1] because the invention was known or used by 
others in this country, or patented or described in a printed publication 
in this or a foreign country before the invention thereof by 
the applicant for patent.

¶ 15.12 35 U.S.C. 102(b) Rejection

The claim is rejected under 35 U.S.C. 102(b) as being clearly 
anticipated by [1] because the invention was patented or described 
in a printed publication in this or a foreign country, or in public 
use or on sale in this country more than one (1) year prior to the 
application for patent in the United States.

¶ 15.13 35 U.S.C. 102(c) Rejection

The claim is rejected under 35 U.S.C. 102(c) because the 
invention has been abandoned.

¶ 15.14 35 U.S.C. 102(d)/172 Rejection

The claim is rejected under 35 U.S.C. 102(d), as modified by 
35 U.S.C. 172, as being clearly anticipated by [1] because the 
invention was first patented or caused to be patented, or was the 
subject of an inventor’s certificate by the applicant, or his/her 
legal representatives or assigns in a foreign country prior to the 
date of the application for patent in this country on an application 
for patent or inventor’s certificate filed more than six (6) months 
before the filing of the application in the United States.

¶ 15.15 35 U.S.C. 102(e) Rejection

The claim is rejected under 35 U.S.C. 102(e) as being clearly 
anticipated by [1] because the invention was described in a patented 
or published application for patent by another filed in the 
United States before the invention thereof by the applicant for 
patent.

¶ 15.16 35 U.S.C. 102(f) Rejection

The claim is rejected under 35 U.S.C. 102(f) because applicant 
did not himself invent the subject matter sought to be patented.

¶ 15.17 35 U.S.C. 102(g) Rejection

The claim is rejected under 35 U.S.C. 102(g) because, before 
the applicant's invention thereof, the invention was made in this 
country by another who had not abandoned, suppressed or concealed 
it.



¶ 15.24.05 Identical Claim: Common Assignee

The claim is directed to the same invention as that of the claim 
of commonly assigned copending Application No. [1]. The issue 
of priority under 35 U.S.C. 102(g) and possibly 35 U.S.C. 102(f)
of this single invention must be resolved. Since the U.S. Patent 
and Trademark Office normally will not institute an interference 
between applications or a patent and an application of common 
ownership (see MPEP § 2302), the assignee is required to state 
which entity is the prior inventor of the conflicting subject matter. 
A terminal disclaimer has no effect in this situation since the basis 
for refusing more than one patent is priority of invention under 35 
U.S.C.102(f) or (g) and not an extension of monopoly. Failure to 
comply with this requirement will result in a holding of abandonment 
of this application.

The following form paragraph should be included 
after the form paragraph setting forth the rejection 
under 35 U.S.C. 102 (a), (b), (d) or (e) to provide an 
explanation of the applied reference.

¶ 15.15.01 Explanation of rejection under 35 U.S.C. 
102(a), (b), (d), or (e) 

The shape and appearance of [1] is identical in all material 
respects to that of the claimed design, Hupp v. Siroflex of America 
Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

Examiner Note:

1.This paragraph should be included after paragraph 15.11, 
15.12, 15.14 or 15.15 to explain the basis of the rejection.

2.In bracket [1], identify the reference applied against the 
claimed design.

The following form paragraphs may be used to 
reject a claim under 35 U.S.C. 102(e) over an application 
or patent having an earlier effective U.S. filing 
date with a common inventor and/or assignee, or that 
discloses but does not claim the design.




 

¶ 15.15.02 Provisional 35 U.S.C. 102(e) rejection - design 
disclosed but not claimed in another application with 
common inventor and/or assignee 

 The claim is provisionally rejected under 35 U.S.C. 102(e) as 
being anticipated by copending Application No. [1] which has a 
common [2] with the instant application.

Based upon the different inventive entity and the earlier effective 
U.S. filing date of the copending application, it would constitute 
prior art under 35 U.S.C. 102(e), if published under 35 U.S.C. 
122(b) or patented. This provisional rejection under 35 U.S.C. 
102(e) is based upon a presumption of future publication or patenting 
of the copending application.

Since the design claimed in the present application is not the 
same invention claimed in the [3] application, the examiner suggests 
overcoming this provisional rejection in one of the following 
ways: (A) a showing under 37 CFR 1.132 that the design in the 
reference was derived from the designer of this application and is 
thus not the invention “by another;” (B) a showing of a date of 
invention for the instant application prior to the effective U.S. filing 
date of the reference under 37 CFR 1.131; (C) Perfecting a 
claim to priority under 35 U.S.C. 119 that antedates the reference 
by filing a certified priority document in the application that satisfies 
the enablement and description requirements of 35 U.S.C. 
112, first paragraph; or (D) Perfecting priority under 35 U.S.C. 
120 by amending the specification of the application to contain a 
specific reference to a prior application or by filing an application 
data sheet under 37 CFR 1.76 which contains a specific reference 
to a prior application in accordance with 37 CFR 1.78(a) and 
establishing that the prior application satisfies the enablement and 
description requirements of 35 U.S.C. 112, first paragraph.

 This rejection may not be overcome by the filing of a terminal 
disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 
(Fed. Cir. 1991).

Examiner Note:

1.This form paragraph is used to provisionally reject over a 
copending application (utility or design) with an earlier filing date 
that discloses (but does not claim) the claimed invention which 
has not been patented or published under 35 U.S.C. 122. The 
copending application must have either a common assignee or at 
least one common inventor.

2.Use 35 U.S.C. 102(e) as amended by the American Inventor’s 
Protection Act (form paragraph 7.12) to determine the reference’s 
prior art date, unless the reference is a U.S. patent issued 
directly, or indirectly, from an international application which has 
an international filing date prior to November 29, 2000. Use pre-
AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01) only if the reference 
is a U.S. patent issued directly or indirectly from either a 
national stage of an international application (application under 35 
U.S.C. 371) which has an international filing date prior to November 
29, 2000 or a continuing application claiming benefit under 35 
U.S.C. 120, 121, or 365 (c) to an international application having 
an international filing date prior to November 29, 2000. See the 
Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in 
the determination of the 35 U.S.C. 102(e) date. 

3.In bracket 2, insert inventor or assignee.

¶ 15.15.03 Provisional 35 U.S.C. 102(e) rejection - design 
claimed in an earlier filed design patent application with 
common inventor and/or assignee 

 The claim is provisionally rejected under 35 U.S.C. 102(e) as 
being anticipated by the claim in copending Design Patent Application 
No. [1] which has a common [2] with the instant application.


Based upon the different inventive entity and the earlier effective 
U.S. filing date of the copending application, it would constitute 
prior art under 35 U.S.C. 102(e), if patented. This provisional 
rejection under 35 U.S.C. 102(e) is based upon a presumption of 
future patenting of the copending application. The rejection may 
be overcome by abandoning the earlier filed copending application.


Examiner Note:

1.In bracket 2, insert inventor or assignee.

2.This form paragraph must be preceded by form paragraph 
15.24.05 to notify the applicant that the question of patentability 
under 35 U.S.C. 102(f)/(g) also exists.

¶ 15.15.04 35 U.S.C. 102(e) rejection - design disclosed 
but not claimed in a patent 

 The claim is rejected under 35 U.S.C. 102(e) as being anticipated 
by patent [1].

Based upon the different inventive entity and the earlier effective 
U.S. filing date of the reference, it constitutes prior art under 
35 U.S.C. 102(e).

Since the design claimed in the present application is not the 
same invention claimed in patent [2], the examiner suggests overcoming 
this rejection in one of the following ways: (A) a showing 
under 37 CFR 1.132 that the design in the reference was derived 
from the designer of this application and is thus not the invention 
“by another;” (B) a showing of a date of invention for the instant 
application prior to the effective U.S. filing date of the reference 
under 37 CFR 1.131; (C) Perfecting a claim to priority under 35 
U.S.C. 119 that antedates the reference by filing a certified priority 
document in the application that satisfies the enablement and 
description requirements of 35 U.S.C. 112, first paragraph; or (D) 
Perfecting priority under 35 U.S.C. 120 by amending the specification 
of the application to contain a specific reference to a prior 
application or by filing an application data sheet under 37 CFR 
1.76 which contains a specific reference to a prior application in 
accordance with 37 CFR 1.78(a) and establishing that the prior 
application satisfies the enablement and description requirements 
of 35 U.S.C. 112, first paragraph

This rejection may not be overcome by the filing of a terminal 
disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 
(Fed. Cir. 1991).

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is disclosed in the drawings of 
an earlier filed design or utility patent but is not claimed therein. 
When the design claimed in the application being examined is disclosed 
in the drawings of an earlier filed design patent, it would 
most often be in the form of subcombination subject matter, (part 
or portion of an article), that is patentably distinct from the claim 




 

for the design embodied by the combination or whole article. It 
may also be unclaimed subject matter depicted in broken lines in 
the earlier filed application.

2.In brackets 1 and 2, insert number of patent.

The following form paragraphs may be used in a 
second or subsequent action, where appropriate.

¶ 15.38 Rejection Maintained

The arguments presented have been carefully considered, but 
are not persuasive that the rejection of the claim under [1] should 
be withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.



¶ 15.40.01 Final Rejection Under Other Statutory 
Provisions

The claim is again and FINALLY REJECTED under [1] as 
[2].

Examiner Note:

1.In bracket 1, insert statutory basis.

2.In bracket 2, insert reasons for rejection.

3.See paragraphs in MPEP Chapter 700, for “Action is Final” 
and “Advisory after Final” paragraphs.



1504.03Nonobviousness [R-5]

35 U.S.C. 103. Conditions for patentability; non-obvioussubject matter.

(a)A patent may not be obtained though the invention is not 
identically disclosed or described as set forth in section 102 of this 
title, if the differences between the subject matter sought to be patented 
and the prior art are such that the subject matter as a whole 
would have been obvious at the time the invention was made to a 
person having ordinary skill in the art to which said subject matter 
pertains. Patentability shall not be negatived by the manner in 
which the invention was made.





(c)(1) Subject matter developed by another person, which 
qualifies as prior art only under one or more of subsections (e), (f), 
and (g) of section 102 of this title, shall not preclude patentability 
under this section where the subject matter and the claimed invention 
were, at the time the claimed invention was made, owned by 
the same person or subject to an obligation of assignment to the 
same person.

(2)For purposes of this subsection, subject matter developed 
by another person and a claimed invention shall be deemed 
to have been owned by the same person or subject to an obligation 
of assignment to the same person if — 

(A)the claimed invention was made by or on behalf of 
parties to a joint research agreement that was in effect on or before 
the date the claimed invention was made;

(B)the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and 

(C)the application for patent for the claimed invention 
discloses or is amended to disclose the names of the parties to the 
joint research agreement. 

(3)For purposes of paragraph (2), the term “joint 
research agreement” means a written contract, grant, or cooperative 
agreement entered into by two or more persons or entities for 
the performance of experimental, developmental, or research 
work in the field of the claimed invention.

A claimed design that meets the test of novelty 
must additionally be evaluated for nonobviousness 
under 35 
U.S.C. 103(a).

I.GATHERING THE FACTS

The basic factual inquiries guiding the evaluation 
of obviousness, as outlined by the Supreme Court in 
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 
459 (1966), are applicable to the evaluation of design 
patentability:

(A)Determining the scope and content of the 
prior art;

(B)Ascertaining the differences between the 
claimed invention and the prior art;

(C)Resolving the level of ordinary skill in the art; 
and

(D)Evaluating any objective evidence of nonobviousness 
(i.e., so-called “secondary considerations”).

A.Scope of the Prior Art

The scope of the relevant prior art for purposes of 
evaluating obviousness under 35 U.S.C. 103(a)
extends to all “analogous arts.” 

While the determination of whether arts are analogous 
is basically the same for both design and utility 
inventions (see MPEP § 904.01(c) and § 2141.01(a)), 
In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 
(CCPA 1956) provides specific guidance for evaluating 
analogous arts in the design context, which should 
be used to supplement the general requirements for 
analogous art as follows:

The question in design cases is not whether the 
references 
sought to be combined are in analogous arts in 
the 
mechanical sense, but whether they are so related that 
the appearance of certain ornamental features in one 




 

would suggest the application of those features to the 
other.

Thus, if the problem is merely one of giving an attractive 
appearance to a surface, it is immaterial whether the 
surface in question is that of wall paper, an oven door, or 
a piece of crockery. . . .

On the other hand, when the proposed combination of 
references involves material modifications of the basic 
form of one article in view of another, the nature of the 
article involved is a definite factor in determining whether 
the proposed change involves [patentable] invention. 

Therefore, where the differences between the 
claimed design and the prior art are limited to the 
application of ornamentation to the surface of an article, 
any prior art reference which discloses substantially 
the same surface ornamentation would be 
considered analogous art. Where the differences are in 
the shape or form of the article, the nature of the articles 
involved must also be considered.

B.Differences Between the Prior Art and the 
Claimed Design

In determining patentability under 35 U.S.C. 
103(a), it is the overall appearance of the design that 
must be considered. In re Leslie, 547 F.2d 116, 192 
USPQ 427 (CCPA 1977). The mere fact that there are 
differences between a design and the prior art is not 
alone sufficient to justify patentability. In re Lamb, 
286 F.2d 610, 128 USPQ 539 (CCPA 1961).

All differences between the claimed design and the 
closest prior art reference should be identified in any 
rejection of the design claim under 35 U.S.C. 103(a). 
If any differences are considered de minimis or inconsequential 
from a design viewpoint, the rejection 
should so state.

C.Level of Ordinary Skill in the Art

In order to be unpatentable, 35 U.S.C. 103(a)
requires that an invention must have been obvious to a 
designer having “ordinary skill in the art” to which 
the subject matter sought to be patented pertains. The 
“level of ordinary skill in the art” from which obviousness 
of a design claim must be evaluated under 
35 
U.S.C. 103(a) has been held by the courts to be the 
perspective of the “designer of . . . articles of the types 
presented.” In re Nalbandian, 661 F.2d 1214, 1216, 
211 USPQ 782, 784 (CCPA 1981); In re Carter, 673 
F.2d 1378, 213 USPQ 625 (CCPA 1982). 

D.Objective Evidence of Nonobviousness (Secondary 
Considerations)

Secondary considerations, such as commercial success 
and copying of the design by others, are relevant 
to the evaluation of obviousness of a design claim. 
Evidence of nonobviousness may be present at the 
time a prima facie case of obviousness is evaluated or 
it may be presented in rebuttal of a prior obviousness 
rejection.

II.PRIMA FACIE OBVIOUSNESS

Once the factual inquiries mandated under Graham 
v. John Deere Co., 383 U. S. 1, 148 USPQ 459 (1966), 
have been made, the examiner must determine 
whether they support a conclusion of prima facieobviousness. To establish prima facie obviousness, all 
the claim limitations must be taught or suggested by 
the prior art.

In determining prima facie obviousness, the proper 
standard is whether the design would have been obvious 
to a designer of ordinary skill with the claimed 
type of article. In re Nalbandian, 661 F.2d 1214, 
211 
USPQ 782 (CCPA 1981). 

As a whole, a design must be compared with something 
in existence, and not something brought into 
existence by selecting and combining features from 
prior art references. In re Jennings, 182 F.2d 207, 
86 
USPQ 68 (CCPA 1950). The “something in existence” 
referred to in Jennings has been defined as “...a 
reference... the design characteristics of which are 
basically the same as the claimed design....” In re 
Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 
1982) (the primary reference did “...not give the same 
visual impression...” as the design claimed but had a 
“...different overall appearance and aesthetic 
appeal...”.) Hence, it is clear that “design characteristics” 
means overall visual appearance. This definition 
of “design characteristics” is reinforced in the decision 
of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 
1206, 1208 (Fed. Cir. 1993), and is supported by the 
earlier decisions of In re Yardley, 493 F.2d 1389, 181 
USPQ 331, 334 (CCPA 1974) and In re Leslie, 
547 
F.2d 116, 192 USPQ 427, 431 (CCPA 1977). 
Specifically, in the Yardley decision, it was stated that 
“[t]he basic consideration in determining the patentability 
of designs over prior art is similarity of appearance.” 
493 F.2d at 1392-93, 181 USPQ at 334. 




 

Therefore, in 
order to support a holding of obviousness, 
a primary reference must be more than a 
design concept; it must have an appearance substantially 
the same as the claimed design. In re Harvey, 12 
F.3d 1061, 29 
USPQ2d 1206 (Fed. Cir. 1993). Absent 
such a reference, no holding of obviousness under 35 
U.S.C. 103(a) can be made, whether based on a single 
reference alone or in view of modifications suggested 
by secondary prior art.

A rejection under 35 U.S.C. 103(a) based on a single 
non-analogous reference would not be proper. The 
reason is that under 35 U.S.C. 103(a), a designer of 
ordinary skill would not be charged with knowledge 
of prior art that is not analogous to the claimed design.

Examiners are advised that differences between the 
claimed design and a primary reference may be 
held to be minor in nature and unrelated to the overall 
aesthetic appearance of the design with or without the 
support of secondary references. In re Nalbandian, 
661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such 
differences are shown by secondary references, they 
should be applied so as to leave no doubt that those 
differences would have been obvious to a designer of 
ordinary skill in the art. In re Sapp, 324 F.2d 1021, 
139 USPQ 522 (CCPA 1963). 

When a claim is rejected under 35 U.S.C. 103(a) as 
being unpatentable over prior art, features of the 
design which are functional and/or hidden during end 
use may not be relied upon to support patentability. 
“[A] design claim to be patentable must also be ornamental; 
and functional features or forms cannot be 
relied upon to support its patentability.” Jones v. 
Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). 
“It is well settled that patentability of a design cannot 
be based on elements which are concealed in the normal 
use of the device to which the design is applied.” 
In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 
(CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 
72 (CCPA 1961). It is not necessary that prior art be 
relied upon in a rejection under 35 U.S.C. 103(a) to 
show similar features to be functional and/or hidden 
in the art. However, examiners must provide evidence 
to support the prima facie functionality of such 
features. Furthermore, hidden portions or functional 
features cannot be relied upon as a basis for patentability. 
If applicant wishes to rely on functional or 
hidden features as a basis for patentability, then the 
same standard for establishing ornamentality under 
35 
U.S.C. 171 must be applied before these features 
can be given any patentable weight. See MPEP 
§
 
1504.01(c).

A.Combining Prior Art References

A rejection under 35 U.S.C. 103(a) would be 
appropriate if a designer of ordinary skill would have 
been motivated to modify a primary reference by 
deleting features thereof or by interchanging with or 
adding features from pertinent secondary references. 
In order for secondary references to be considered, 
there must be some suggestion in the prior art to modify 
the basic design with features from the secondary 
references. In re Borden, 90 F.3d 1570, 1572, 39 
USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-
standing test for properly combining references has 
been “...whether they are so related that the appearance 
of certain ornamental features in one would suggest 
the 
application of those features to the other.” In 
re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 
(CCPA 1956).

The prohibition against destroying the function of 
the design is inherent in the logic behind combining 
references to render a claimed invention obvious 
under 35 U.S.C. 103(a). If the proposed combination 
of the references so alters the primary reference that 
its broad function can no longer be carried out, the 
combination of the prior art would not have been 
obvious to a designer of ordinary skill in the art. It is 
permissible to modify the primary reference to the 
extent that the specific function of the article may be 
affected while the broad function is not affected. For 
example, a primary reference to a cabinet design 
claimed as airtight could be modified to no longer be 
airtight so long as its function as a cabinet would not 
be impaired.

1.Analogous Art 

When a modification to a primary reference 
involves a change in configuration, both the primary 
and secondary references must be from analogous 
arts. In re Glavas, 230 F.2d 447, 109 USPQ 50 
(CCPA 1956). 

Analogous art can be more broadly interpreted 
when applied to a claim that is directed to a design 
with a portion simulating a well known or naturally 
occurring object or person. The simulative nature of 
that portion of the design is prima facie evidence that 




 

art which simulates that portion would be within the 
level of ordinary skill under 35 U.S.C. 103(a).

2.Non-analogous Art

When modifying the surface of a primary reference 
so as to provide it with an attractive appearance, 
it is immaterial whether the secondary reference is 
analogous art, since the modification does not involve 
a change in configuration or structure and would not 
have destroyed the characteristics (appearance and 
function) of the primary reference. In re Glavas, 
230 
F.2d 447, 109 USPQ 50 (CCPA 1956).

III.REBUTTAL OF THE PRIMA FACIE CASE

Once a prima facie case of obviousness has been 
established, the burden shifts to the applicant to rebut 
it, if possible, with objective evidence of nonobviousness. 
Examples of secondary considerations are commercial 
success, expert testimony and copying of the 
design by others. Any objective evidence of nonobviousness 
or rebuttal evidence submitted by applicant, 
including affidavits or declarations under 37 CFR 
1.132, must be considered by examiners in determining 
patentability under 35 U.S.C. 103(a). 

When evidence of commercial success is submitted, 
examiners must evaluate it to determine whether 
there is objective evidence of success, and whether 
the success can be attributed to the ornamental design. 
Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 
221 USPQ 97 (Fed. Cir. 1984); In re Nalbandian, 661 
F.2d 1214, 211 USPQ 782 (CCPA 1981). An affidavit 
or declaration under 37 CFR 1.132 has minimal evidentiary 
value on the issue of commercial success if 
there is no nexus or connection between the sales of 
the article in which the design is embodied and the 
ornamental features of the design. Avia Group Int’l 
Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 
(Fed. Cir. 1988). 

Submission of expert testimony must establish the 
professional credentials of the person signing the affidavit 
or declaration, and should not express an opinion 
on the ultimate legal issue of obviousness since 
this conclusion is one of law. Avia Group Int’l Inc. v. 
L.A. Gear, 853 F.2d 1557, 7 
USPQ2d 1548 (Fed. Cir. 
1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 
1082, 227 USPQ 337 (Fed. Cir. 1985).

With regard to evidence submitted showing that 
competitors in the marketplace are copying the 
design, more than the mere fact of copying is necessary 
to make that action significant because copying 
may be attributable to other factors such as lack of 
concern for patent property or indifference with 
regard to the patentee’s ability to enforce the patent. 
Cable Electric Products, Inc. v. Genmark, Inc., 770 
F.2d 1015, 226 
USPQ 881 (Fed. Cir. 1985).

“A prima facie case of obviousness can be rebutted 
if the applicant...can show that the art in any material 
respect ‘taught away’ from the claimed invention...A 
reference may be said to teach away when a person of 
ordinary skill, upon reading the reference...would be 
led in a direction divergent from the path that was 
taken by the applicant.” In re Haruna, 249 F.3d 1327, 
58USPQ2d 1517 (Fed. Cir. 2001).

For additional information regarding the issue of 
objective evidence of nonobviousness, attention is 
directed to MPEP § 716 through § 716.06.

The following form paragraph may be used in an 
obviousness rejection under 35 U.S.C. 103(a), where 
appropriate.

¶ 15.18 35 U.S.C. 103(a) Rejection (Single Reference)

The claim is rejected under 35 U.S.C. 103(a) as being unpatentable 
over [1]. Although the invention is not identically disclosed 
or described as set forth in 35 U.S.C. 102, if the differences 
between the subject matter sought to be patented and the prior art 
are such that the subject matter as a whole would have been obvious 
at the time the invention was made to a designer having ordinary 
skill in the art to which said subject matter pertains, the 
invention is not patentable.

¶ 15.70 Preface, 35 U.S.C. 103(a) Rejection

It would have been obvious to a designer of ordinary skill in 
the art at the time the invention was made to [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 
1.

¶ 15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single 
Reference)

It is well settled that it is unobviousness in the overall appearance 
of the claimed design, when compared with the prior art, 
rather than minute details or small variations in design as appears 
to be the case here, that constitutes the test of design patentability. 
See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In 
re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

¶ 15.19 35 U.S.C. 103(a) Rejection (Multiple References)

The claim is rejected under 35 U.S.C. 103(a) as being unpatentable 
over [1] in view of [2].




 

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a designer of ordinary skill in the art to 
which said subject matter pertains, the invention is not patentable.



¶ 15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple 
References)

This modification of the primary reference in light of the secondary 
reference is proper because the applied references are so 
related that the appearance of features shown in one would suggest 
the application of those features to the other. See In re Rosen, 
673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 
F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 
F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that 
case law has held that a designer skilled in the art is charged with 
knowledge of the related art; therefore, the combination of old 
elements, herein, would have been well within the level of ordinary 
skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 
1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 
(CCPA 1981).



The following form paragraphs may be used when 
making a rejection under 35 U.S.C. 103(a), where the 
reference application or patent is prior art under 35 
U.S.C. 102(e).

¶ 15.19.02 Preface 35 U.S.C. 102(e)/103(a) rejection - 
Different inventors, common assignee, obvious designs, no 
evidence of common ownership at time later design was 
made

The claim is directed to a design not patentably distinct from 
the design of commonly assigned [1]. Specifically, the claimed 
design is different from the one in [2] in that [3]. These differences 
are considered obvious and do not patentably distinguish 
the overall appearance of the claimed design over the design in 
[4].

The commonly assigned [5], discussed above, has a different 
inventive entity from the present application. Therefore, it qualifies 
as prior art under 35 U.S.C. 102(e), (f) or (g) and forms the 
basis for a rejection of the claim in the present application under 
35 U.S.C. 103(a) if the conflicting design claims were not commonly 
owned at the time the design in this application was made. 
In order to resolve this issue, the applicant, assignee or attorney of 
record can state that the conflicting designs were commonly 
owned at the time the design in this application was made, or the 
assignee can name the prior inventor of the conflicting subject 
matter.

 A showing that the designs were commonly owned at the time 
the design in this application was made will overcome a rejection 
under 35 U.S.C. 103(a) based upon the commonly assigned case 
as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) 
for applications filed on or after November 29, 1999.

Examiner Note:

1.This form paragraph should be used when the application 
being examined is commonly assigned with a conflicting application 
or patent, but there is no indication that they were commonly 
assigned at the time the invention was actually made.

2.If the conflicting claim is in a patent with an earlier U.S. filing 
date, a rejection under 35 U.S.C. 102(e)/103(a) should be 
made.

3.If the conflicting claim is in a commonly assigned, copending 
application with an earlier filing date, a provisional rejection 
under 35 U.S.C. 102(e)/103(a) should be made.

4.An obviousness double patenting rejection may also be 
included in the action.

5. In brackets 1, 2, 4 and 5, insert patent and number, or 
copending application and serial number.

6.In bracket 3, identify differences between design claimed in 
present application and that claimed in earlier filed patent or 
copending application.

7.This form paragraph should only be used ONCE in an Office 
action.

8.If the rejection relies upon prior art under 35 U.S.C. 102(e), 
use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection 
Act to determine the reference’s prior art date, unless the 
reference is a U.S. patent issued directly, or indirectly, from an 
international application which has an international filing date 
prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only 
if the reference is a U.S. patent issued directly or indirectly form 
either a national stage of an international application (application 
under 35 U.S.C. 371) which has international filing date prior to 
November 29, 2000 or a continuing application claiming benefit 
under 35 U.S.C. 120, 121, or 365(c) to an international application 
having an international filing date prior to November 29, 2000. 
See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to 
assist in the determination of the reference’s 35 U.S.C. 102(e) 
date.



¶ 15.19.03 Provisional 35 U.S.C. 102(e)/103(a) rejection - 
design disclosed but not claimed in another application 
with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 103(a) as 
being obvious over copending Application No. [1] which has a 
common [2] with the instant application. Based upon the different 
inventive entity and the earlier effective U.S. filing date of the 
copending application, it would constitute prior art under 35 
U.S.C. 102(e) if published under 35 U.S.C. 122(b) or patented. 
This provisional rejection under 35 U.S.C. 103(a) is based upon a 
presumption of future publication or patenting of the conflicting 
application.

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a designer having ordinary skill in the art 




 

to which said subject matter pertains, the invention is not patentable. 


[3]

 Since the design claimed in the present application is not the 
same invention claimed in the [4] application, this provisional 
rejection may be overcome by a showing under 37 CFR 1.132 that 
the design in the reference was derived from the designer of this 
application and is thus not the invention “by another,” or by a 
showing of a date of invention for the instant application prior to 
the effective U.S. filing date of the reference under 37 CFR 1.131. 
For applications filed on or after November 29, 1999, this rejection 
might also be overcome by showing that the subject matter of 
the reference and the claimed invention were, at the time the 
invention was made, owned by the same person or subject to an 
obligation of assignment to the same person. See MPEP § 
706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is obvious over subject matter 
disclosed in the drawings of an earlier filed design or utility application 
but is not claimed therein. The design claimed in the application 
being examined can be an obvious version of subject matter 
disclosed in the drawings of an earlier filed design application. 
This subject matter may be depicted in broken lines, or may be in 
the form of a subcombination (part or portion of an article) that is 
patentably distinct from the claim for the design embodied by the 
combination or whole article.

2.In brackets 1 and 4 insert serial number of copending application.


3. In bracket 2, insert inventor or assignee.

4.In bracket 3, provide explanation of obviousness including 
differences and follow the explanation with form paragraphs 
15.70 and 15.67 or 15.68.

5.Use 35 U.S.C. 102(e) as amended by the American Inventor’s 
Protection Act to determine the reference’s prior art date, 
unless the reference is a U.S. patent issued directly, or indirectly, 
from an international application which has an international filing 
date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) 
only if the reference is a U.S. patent issued directly or indirectly 
from either a national stage of an international application (application 
under 35 U.S.C. 371) which has an international filing date 
prior to November 29, 2000 or a continuing application claiming 
benefit under 35 U.S.C. 120, 121, or 365(c) to an international 
application having an international filing date prior to November 
29, 2000. See the Examiner Notes for form paragraphs 7.12 and 
7.12.01 to assist in the determination of the reference’s 35 U.S.C. 
102(e) date.



¶ 15.19.04 Provisional 35 U.S.C. 102(e)/103(a) rejection - 
design claimed in an earlier filed design patent application 
with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 103(a) as 
being obvious over the claim in copending Design Patent Application 
No. [1] which has a common [2] with the instant application. 
Based upon the different inventive entity and the earlier effective 
U.S. filing date of the copending application, it would constitute 
prior art under 35 U.S.C. 102(e) if patented. This provisional 
rejection under 35 U.S.C. 103(a) is based upon a presumption of 
future patenting of the conflicting application.

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to 
which said subject matter pertains, the invention is not patentable. 

[3]

Since the design claimed in the present application is not patentably 
distinct from the design claimed in the [4] application, this 
provisional rejection may be overcome by merging the two applications 
into a single continuation-in-part and abandoning the separate 
parent applications. For applications filed on or after 
November 29, 1999, this rejection might also be overcome by 
showing that the subject matter of the reference and the claimed 
invention were, at the time the invention was made, owned by the 
same person or subject to an obligation of assignment to the same 
person. See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is obvious over the design 
claimed in an earlier filed copending application.

2.A provisional obviousness-type double patenting rejection 
must also be included in the action.

3. In brackets 1 and 4, insert serial number of copending application.


4. In bracket 2, insert inventor or assignee.

5.In bracket 3, provide explanation of obviousness including 
differences and follow the explanation with form paragraphs 
15.70 and 15.67 or 15.68.

6.This form paragraph must be preceded by form paragraph 
15.19.02.



¶ 15.19.05 35 U.S.C. 102(e)/103(a) rejection - design 
disclosed but not claimed

The claim is rejected under 35 U.S.C. 103(a) as being obvious 
over [1].

Based upon the different inventive entity and the earlier effective 
U.S. filing date of the reference, it constitutes prior art under 
35 U.S.C. 102(e). 

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a designer having ordinary skill in the art 
to which said subject matter pertains, the invention is not patentable.


[2]

Since the design claimed in the present application is not the 
same invention claimed in the [3] patent, this rejection may be 
overcome by a showing under 37 CFR 1.132 that the design in the 
reference was derived from the designer of this application and is 
thus not the invention “ by another,” or by a showing of a date of 




 

invention for the instant application prior to the effective U.S. filing 
date of the reference under 37 CFR 1.131. For applications 
filed on or after November 29, 1999, this rejection might also be 
overcome by showing that the subject matter of the reference and 
the claimed invention were, at the time the invention was made, 
owned by the same person or subject to an obligation of assignment 
to the same person. See MPEP § 706.02(l)(1) and § 
706.02(l)(2).

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is obvious over subject matter 
disclosed in the drawings of an earlier filed design or utility 
patent, or application publication, but is not claimed therein. The 
design claimed in the application being examined can be an obvious 
version of subject matter disclosed in the drawings of an earlier 
filed design application. This subject matter may be depicted 
in broken lines, or may be in the form of a subcombination (part 
or portion of an article) that is patentably distinct from the claim 
for the design embodied by the combination or whole article.

2. In brackets 1 and 3, insert number of the U.S. patent, U.S. 
patent application publication, or the WIPO publication of an 
international application that qualifies as prior art under 35 U.S.C. 
102(e). See note 5 below.

3. In bracket 2, provide explanation of obviousness including 
differences and follow the explanation with form paragraphs 
15.70 and 15.67 or 15.68.

4.Use 35 U.S.C. 102(e) as amended by the American Inventor’s 
Protection Act to determine the reference’s prior art date, 
unless the reference is a U.S. patent issued directly, or indirectly, 
from an international application which has an international filing 
date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) 
only if the reference is a U.S. patent issued directly or indirectly 
from either a national stage of an international application (application 
under 35 U.S.C. 371) which has an international filing date 
prior to November 29, 2000 or a continuing application claiming 
benefit under 35 U.S.C. 120, 121, or 365(c) to an international 
application having an international filing date prior to November 
29, 2000. See the Examiner Notes for form paragraphs 7.12 and 
7.12.01 to assist in the determination of the reference’s 35 U.S.C. 
102(e) date.



¶ 15.19.06 35 U.S.C. 102(e)/103(a) rejection - design 
claimed in a design patent with an earlier effective filing 
date and common assignee

The claim is rejected under 35 U.S.C. 103(a) as being obvious 
over the claim in design patent [1].

Based upon the different inventive entity and the earlier effective 
U.S. filing date of the reference, it constitutes prior art under 
35 U.S.C. 102(e). 

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a designer having ordinary skill in the art 
to which said subject matter pertains, the invention is not patentable.


[2]

Since the design claimed in the present application is not patentably 
distinct from the design claimed in the [3] patent, this 
rejection may be overcome by submitting an oath or declaration 
under 37 CFR 1.130 stating that this application and the reference 
are currently owned by the same party and that the inventor 
named in this application is the prior inventor of the subject matter 
in the reference under 35 U.S.C. 104. In addition, a terminal disclaimer 
in accordance with 37 CFR 1.321(c) is also required. For 
applications filed on or after November 29, 1999, this rejection 
might also be overcome by showing that the subject matter of the 
reference and the claimed invention were, at the time the invention 
was made, owned by the same person or subject to an obligation 
of assignment to the same person. See MPEP § 706.02(l)(1)
and § 706.02(l)(2)

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is obvious over the design 
claimed in a design patent having an earlier effective date and a 
common assignee.

2.An obviousness-type double patenting rejection must also be 
included in the action.

3.In brackets 1 and 3, insert number of patent.

4.In bracket 2, provide explanation of obviousness including 
differences and follow the explanation by form paragraphs 15.70and 15.67 or 15.68.

5.This form paragraph must be preceded by form paragraph 
15.19.02.

¶ 15.19.07 35 U.S.C. 102(e)/103(a) rejection - design 
claimed in a design patent having an earlier effective filing 
date and no common assignee

The claim is rejected under 35 U.S.C. 103(a) as being obvious 
over the claim in design patent [1].

Based upon the different inventive entity and the earlier effective 
U.S. filing date of the reference, it constitutes prior art under 
35 U.S.C. 102(e). 

Although the invention is not identically disclosed or described 
as set forth in 35 U.S.C. 102, if the differences between the subject 
matter sought to be patented and the prior art are such that the 
subject matter as a whole would have been obvious at the time the 
invention was made to a designer having ordinary skill in the art 
to which said subject matter pertains, the invention is not patentable.


[2]

Examiner Note:

1.This form paragraph should be used when the claimed design 
in the application being examined is obvious over the design 
claimed in a design patent having an earlier effective filing date.

2.In bracket 2, provide explanation of obviousness including 
differences and follow explanation with form paragraphs 15.70and 15.67 or 15.68.




 

The following form paragraphs may be used in a 
second or subsequent action where appropriate.

¶ 15.38 Rejection Maintained

The arguments presented have been carefully considered, but 
are not persuasive that the rejection of the claim under [1] should 
be withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

¶ 15.39 Obviousness Under 35 U.S.C. 103(a) Repeated

It remains the examiner’s position that the [1] design claimed is 
obvious under 35 U.S.C. 103(a) over [2].

Examiner Note:

In bracket 1, insert name of design.

¶ 15.39.01 35 U.S.C. 103(a) Rejection Repeated (Multiple 
References)

It remains the examiner’s position that the claim is obvious 
under 35 
U.S.C. 103(a) over [1] in view of [2].

¶ 15.39.02 Final Rejection Under 35 U.S.C. 103(a) (Single 
Reference)

The claim is again and FINALLY REJECTED under 35 U.S.C. 
103(a) over [1].

Examiner Note:

See form paragraphs in MPEP Chapter 700, for “Action is 
Final” and “Advisory after Final” paragraphs.

¶ 15.40 Final Rejection Under 35 U.S.C. 103(a) (Multiple 
References)

The claim is again and FINALLY REJECTED under 35 U.S.C. 
103(a) as being unpatentable over [1] in view of [2].

Examiner Note:

See form paragraphs in MPEP Chapter 700 for “Action is 
Final” and “Advisory after Final” paragraphs.

1504.04Considerations Under 35 U.S.C. 
112 [R-5]

35 U.S.C. 112. Specification.

The specification shall contain a written description of the 
invention, and of the manner and process of making and using it, 
in such full, clear, concise, and exact terms as to enable any person 
skilled in the art to which it pertains, or with which it is most 
nearly connected, to make and use the same, and shall set forth the 
best mode contemplated by the inventor of carrying out his invention.


The specification shall conclude with one or more claims particularly 
pointing out and distinctly claiming the subject matter 
which the applicant regards as his invention.



The drawing in a design application is incorporated 
into the claim by use of the claim language “as 
shown.”

Additionally, the drawing disclosure can be supplemented 
by narrative description in the specification 
(see MPEP § 1503.01, subsection II). This description 
is incorporated into the claim by use of the language 
“as shown and described.” See MPEP 
§
 
1503.01, subsection III.

I.35 U.S.C. 112, FIRST AND SECOND 
PARAGRAPHS

Enablement and Scope of Protection

Any analysis for compliance with 35 U.S.C. 112should begin with a determination of whether the 
claims satisfy the requirements of the second paragraph 
before moving on to the first paragraph. See In 
re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 
1971). Therefore, before any determination can be 
made as to whether the disclosure meets the requirements 
of 35 U.S.C. 112, first paragraph, for enablement, 
a determination of the scope of protection 
sought by the claim must be made. However, since the 
drawing disclosure and any narrative description in 
the specification are incorporated into the claim by 
the use of the language “as shown and described,” any 
determination of the scope of protection sought by the 
claim is also a determination of the subject matter that 
must be enabled by the disclosure. Hence, if the 
appearance and shape or configuration of the design 
for which protection is sought cannot be determined 
or understood due to an inadequate visual disclosure, 
then the claim, which incorporates the visual disclosure, 
fails to particularly point out and distinctly claim 
the subject matter applicant regards as their invention, 
in violation of the second paragraph of 35 U.S.C. 112. 
Furthermore, such disclosure fails to enable a 
designer of ordinary skill in the art to make an article 
having the shape and appearance of the design 
for which protection is sought. In such case, a rejection 
of the claim under both the first and second paragraphs 
of 35 U.S.C. 112 would be warranted. An 
evaluation of the scope of the claim under 35 U.S.C 
112, second paragraph, to determine whether the disclosure 
of the design meets the enablement requirement 
of 35 U.S.C. 112, first paragraph, cannot be 
based on the drawings alone. The scope of a claimed 




 

design is understood to be limited to those surfaces or 
portions of the article shown in the drawing in full 
lines in combination with any additional written 
description in the specification. The title does not 
define the scope of the claimed design but merely 
identifies the article in which it is embodied. See 
MPEP § 1503.01, subsection I. It is assumed that the 
claim has been crafted to protect that which the applicant 
“regards as his invention.” In re Zahn, 617 F.2d 
261, 204 USPQ 988 (CCPA 1980). Therefore, when 
visible portions of the article embodying the design 
are not shown, it is because they form no part of the 
claim to be protected. It is prima facie evidence that 
the scope of the claimed design is limited to those surfaces 
“as shown” in the application drawing(s) in the 
absence of any additional written disclosure. See 
MPEP § 1503.01, subsection II. “[T]he adequacy of 
the disclosure must be determined by reference to the 
scope asserted.” Philco Corp. v. Admiral Corp., 199 F. 
Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). However, 
it should be understood that when a surface or 
portion of an article is disclosed in full lines in the 
drawing it is considered part of the claimed design 
and its shape and appearance must be clearly and 
accurately depicted in order to satisfy the requirements 
of the first and second paragraphs of 35 U.S.C. 
112.

 Only those surfaces of the article that are visible at 
the point of sale or during use must be disclosed to 
meet the requirement of 35 U.S.C. 112, first and second 
paragraphs. “The drawing should illustrate the 
design as it will appear to purchasers and users, since 
the appearance is the only thing that lends patentability 
to it under the design law.” Ex parte Kohler, 1905 
C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. 
1905). The lack of disclosure of those surfaces of the 
article which are hidden during sale or use does not 
violate the requirements of the first and second paragraphs 
of 35 U.S.C. 112 because the “patented ornamental 
design has no use other than its visual 
appearance....” In re Harvey, 12 
F.3d 1061, 1064, 
29 
USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, 
to make the “visual appearance” of the design merely 
involves the reproduction of what is shown in the 
drawings; it is not necessary that the functionality of 
the article be reproduced as this is not claimed. The 
function of a design is “that its appearance adds 
attractiveness, and hence commercial value, to the 
article embodying it.” Ex parte Cady, 1916 C.D. 57, 
61, 232 O.G. 619, 621 (Comm’r Pat. 1916). 

The undisclosed surfaces not seen during sale or 
use are not required to be described in the specification 
even though the title of the design is directed to 
the complete article because the design is embodied 
only in those surfaces which are visible. Ex parte 
Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 
1938). While it is not necessary to show in the drawing 
those visible surfaces that are flat and devoid of 
surface ornamentation, they should be described in 
the specification by way of a descriptive statement 
if they are considered part of the claimed 
design. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 
(Comm’r Pat. 1938). Such descriptive statement
may not be used to describe visible surfaces which 
include structure that is clearly not flat. Philco Corp. 
v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 
(D. Del. 1961). See also MPEP §
 
1503.02.

 Applications filed in which the title (in the claim) 
defines an entire article but the drawings and the specification 
fail to disclose portions or surfaces of the 
article that would be visible either during use or on 
sale, will not be considered to violate the requirements 
of the first and second paragraphs of 35 U.S.C. 
112. Therefore, amendment to the title will not be 
required in such applications. However, examiners 
should include a statement in the first Office action on 
the merits (including a notice of allowability) indicating 
that the surface(s) or portion(s) of the article that 
would be normally visible but are not shown in the 
drawing or described in the specification are understood 
to form no part of the claimed design and therefore, 
the determination of patentability of the claimed 
design is based on the views of the article shown in 
the drawing and the description in the specification. 
Form paragraph 15.85 may be used for this purpose.

When a claim is rejected under 35 U.S.C. 112, first 
and second paragraphs, as nonenabling and indefinite 
due to an insufficient drawing disclosure, examiners 
must specifically identify in the Office action what the 
deficiencies are in the drawing. A mere statement that 
the claim is nonenabling and indefinite due to the 
poor quality of the drawing is not a sufficient explanation 
of the deficiencies in the drawing disclosure. 
Examiners must specifically point out those portions 
of the drawing that are insufficient to permit an understanding 
of the shape and appearance of the design 




 

claimed, and, if possible, suggest how the rejection 
may be overcome. Form paragraphs 15.21 and 
15.20.02 may be used.

When inconsistencies between the views of the 
drawings are so great that the overall appearance of 
the design is unclear, the claim should be rejected 
under 35 U.S.C. 112, first and second paragraphs, as 
nonenabling and indefinite, and the 
rejection should 
specifically identify all of the inconsistencies between 
the views of the drawing. Otherwise, inconsistencies 
between drawing views will be objected to by the 
examiner and correction required by the applicant. 
See MPEP § 1503.02.

If the visual disclosure of the claimed design as 
originally filed is of such poor quality that its overall 
shape and appearance cannot be understood, applicant 
should be advised that the claim might be fatally 
defective by using form paragraph 15.65.

As indicated above, a narrative description in the 
specification can supplement the drawing disclosure 
to define the scope of protection sought by the claim. 
Furthermore, such description is incorporated into the 
claim by the use of the language “and described” 
therein. However, if a description in the specification 
refers to embodiments or modified forms not shown 
in the drawing, or includes vague and nondescriptive 
words such as “variations” and “equivalents,” or a 
statement indicating that the claimed design is not 
limited to the exact shape and appearance shown in 
the drawing, the claim should be rejected under 
35 
U.S.C. 112, first and second paragraphs, as nonenabling 
and indefinite. The reason being the description 
fails to enable a designer of ordinary skill in the 
art to make an article having the shape and 
appearance of those other embodiments, modified 
forms or “variations” and “equivalents” referred to in 
the description in the absence of additional drawing 
views. Furthermore, in the absence of additional 
drawing views, the description, which is incorporated 
into the claim, fails to particularly point out and distinctly 
claim the shape and appearance of those other 
embodiments, modified forms or “variations” and 
“equivalents” that applicants regard as their invention. 
Form paragraph 15.21 may be used to reject a claim 
for the above reasons.



¶ 15.85 Undisclosed visible surface(s)/portion(s) of article 
not forming part of the claimed design

 The [1] of the article [2] not shown in the drawing or 
described in the specification. It is understood that the appearance 
of any part of the article not shown in the drawing or described in 
the specification forms no part of the claimed design. In re Zahn, 
617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination 
of patentability is based on the design for the article 
shown and described.

Examiner Note:

1. In bracket 1, insert surface or surfaces which are not shown.

2. In bracket 2, insert “is” or “are”.



¶ 15.21 Rejection, 35 U.S.C. 112, First And Second 
Paragraphs

The claim is rejected under 35 U.S.C. 112, first and second 
paragraphs, as the claimed invention is not described in such full, 
clear, concise and exact terms as to enable any person skilled in 
the art to make and use the same, and fails to particularly point out 
and distinctly claim the subject matter which applicant regards as 
the invention.

The claim is indefinite and nonenabling [1].

Examiner Note:

1.This form paragraph should not be used when it is appropriate 
to make one or more separate rejections under the first and/or 
the second paragraph of 35 U.S.C. 112.

2.In bracket 1, a complete explanation of the basis for the 
rejection should be provided.

¶ 15.20.02 Suggestion To Overcome Rejection Under 35 
U.S.C. 112, First and Second Paragraphs

It is suggested that applicant may submit large, clear informal 
drawings or photographs which show [1] in order that the examiner 
may be in a position to determine if the claim may be clarified 
without the addition of new matter (35 U.S.C. 132, 37 CFR 
1.121). In the alternative, applicant may disclaim the areas or portions 
of the design which are considered indefinite and nonenabling 
by converting them to broken lines and amend the 
specification to include a statement that the portions of the [2]
shown in broken lines form no part of the claimed design.

Examiner Note:

1.In bracket 1, identify the areas or portions of the design 
which are unclear.

2.In bracket 2, insert title of the article.

¶ 15.65 Amendment May Not Be Possible

The claim might be fatally defective; that is, it might not be 
possible to [1] without introducing new matter (35 U.S.C. 132, 37 
CFR 1.121).




 

Examiner Note:

In bracket 1, identify portion of the claimed design which is 
insufficiently disclosed.

¶ 15.73 Corrected Drawing Sheets Required

Failure to submit replacement correction sheets overcoming all 
of the deficiencies in the drawing disclosure set forth above, or an 
explanation why the drawing corrections or additional drawing 
views are not necessary will result in the rejection of the claim 
under 35 U.S.C. 112, first and second paragraphs, being made 
FINAL in the next Office action.

New Matter

New matter is subject matter which has no antecedent 
basis in the original specification, drawings or 
claim (MPEP § 608.04). An amendment to the claim 
must have antecedent basis in the original disclosure. 
35 U.S.C. 132; 37 CFR 1.121(f). Prior to final 
action, all amendments will be entered in the application 
and will be considered by the examiner. Ex parte 
Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. 
1986). An amendment to the claim which has no antecedent 
basis in the specification and/or drawings as 
originally filed introduces new matter because that 
subject matter is not described in the application as 
originally filed. The claim must be rejected under 
35 
U.S.C. 112, first paragraph. An amendment to the 
disclosure not affecting the claim (such as environment 
in the title or in broken lines in the drawings), 
which has no antecedent basis in the application as 
originally filed, must be objected to under 35 U.S.C. 
132 as lacking support in the application as originally 
filed and a requirement must be made to cancel the 
new matter.

The scope of a design claim is defined by what is 
shown in full lines in the application drawings. In re 
Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 
1988). The claim may be amended by broadening or 
narrowing its scope within the bounds of the disclosure 
as originally filed. 

A change in the configuration of the claimed design 
is considered a departure from the original disclosure 
and introduces prohibited new matter (37 CFR 
1.121(f)). See In re Salmon, 705 F.2d 1579, 217 
USPQ 981 (Fed. Cir. 1983). This includes the removal 
of three-dimensional surface treatment that is an integral 
part of the configuration of the claimed design, 
for example, beading, grooves, and ribs. The underlying 
configuration revealed by such an amendment 
would not be apparent in the application as filed and, 
therefore, it could not be established that applicant 
was in possession of this amended configuration at 
the time the application was filed. However, an 
amendment that changes the scope of a design by 
either reducing certain portions of the drawing to broken 
lines or converting broken line structure to solid 
lines is not a change in configuration as defined by the 
court in Salmon. The reason for this is because applicant 
was in possession of everything disclosed in the 
drawing at the time the application was filed and the 
mere reduction of certain portions to broken lines or 
conversion of broken line structure to solid lines is not 
a departure from the original disclosure. Examiners 
are cautioned that if broken line structure is converted 
to solid lines by way of amendment, the shape and 
configuration of that structure must have been fully 
disclosed and enabling at the time the application was 
filed. An amendment which alters the appearance of 
the claimed design by removing two-dimensional, 
superimposed surface treatment may be permitted if it 
is clear from the application that applicant had possession 
of the underlying configuration of the design 
without the surface treatment at the time of filing of 
the application. See In re Daniels, 144 F.3d 
1452,
 
1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 
1998). 

Amendments to the title must have antecedent basis 
in the original application to be permissible. If an 
amendment to the title directed to the article in which 
the design is embodied has no antecedent basis in the 
original application, the claim will be rejected under 
35 U.S.C. 112, first paragraph, as failing to comply 
with the written description requirement thereof. Ex 
parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & 
Inter. 1992). If an amendment to the title directed to 
the environment in which the design is used has no 
antecedent basis in the original application, it will be 
objected to under 35 U.S.C. 132 as introducing new 
matter into the disclosure. See MPEP §
 
1503.01, subsection 
I. 

Examples of permissible amendments filed with the 
original application include: (A) a preliminary amendment 
filed simultaneously with the application papers, 
that is specifically identified in the original oath/declaration 
as required by 37 CFR 1.63 and MPEP 
§
 
608.04(b); and (B) the inclusion of a disclaimer in 




 

the original specification or on the drawings/photographs 
as filed. See 37 CFR 1.152 and MPEP 
§
 
1503.01 and § 1503.02. 

An example of a permissible amendment submitted 
after the filing of the application would be an amendment 
that does not involve a departure from the configuration 
of the original disclosure (37 CFR 
1.121(f)).

An example of an impermissible amendment which 
introduces new matter would be an amendment to the 
claim without antecedent basis in the original disclosure 
which would change the configuration or surface 
appearance of the original design by the addition of 
previously undisclosed subject matter. In re Berkman, 
642 F.2d 427, 209 USPQ 45 (CCPA 1981).

 When an amendment affecting the claim is submitted 
that introduces new matter into the drawing, specification 
or title and a rejection under 35 U.S.C. 112, 
first paragraph is made, the examiner should specifically 
identify in the Office action the subject matter 
which is not considered to be supported by the original 
disclosure. A statement by the examiner that 
merely generalizes that the amended drawing, specification 
or title contains new matter is not sufficient. 
Examiners should specifically identify the differences 
or changes made to the claimed design that are considered 
to introduce new matter into the original disclosure, 
and if possible, suggest how the amended 
drawing, specification or title can be corrected to 
overcome the rejection. Form paragraph 15.51 may be 
used.

 If an amendment that introduces new matter into 
the claim is the result of a rejection under 35 U.S.C. 
112, first and second paragraphs for lack of enablement 
and indefiniteness, and it is clear that the disclosure 
of the claimed design as originally filed cannot 
be corrected without the introduction of new matter, 
the record of the application should reflect that the 
claim is seen to be fatally defective. Form paragraph 
15.65 may be used to set forth this position. 



¶ 15.51 35 U.S.C. 112, First Paragraph Rejection (New 
Matter) 

 The claim is rejected under 35 U.S.C. 112, first paragraph as 
failing to comply with the description requirement thereof since 
the [1] introduces new matter not supported by the original disclosure. 
The original disclosure does not reasonably convey to a 
designer of ordinary skill in the art that applicant was in possession 
of the design now claimed at the time the application was 
filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. 
Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 
(CCPA 1981).

 Specifically, there is no support in the original disclosure [2].

 To overcome this rejection, applicant may attempt to demonstrate 
that the original disclosure establishes that he or she was in 
possession of the amended claim or [3].

Examiner Note:

1.In bracket 1, specify whether new drawing or amendment to 
the drawing, title or specification.

2.In bracket 2, specifically identify what is new matter so that 
the basis for the rejection is clear.

3.In bracket 3, insert specific suggestion how rejection may be 
overcome depending on the basis; such as, “the bracket in figures 
3 and 4 of the new drawing may be corrected to correspond to the 
original drawing” or “the specification may be amended by deleting 
the descriptive statement.”



¶ 15.65 Amendment May Not Be Possible

The claim might be fatally defective; that is, it might not be 
possible to [1] without introducing new matter (35 U.S.C. 132, 37 
CFR 1.121).

Examiner Note:

In bracket 1, identify portion of the claimed design which is 
insufficiently disclosed.

¶ 15.51.01 Amendment to Disclosure Not Affecting Claim - 
35 U.S.C. 132 Objection (New Matter) 

The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121as introducing new matter not supported by the original disclosure. 
The original disclosure does not reasonably convey to a 
designer of ordinary skill in the art that applicant was in possession 
of the amended subject matter at the time the application was 
filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 
1981).

 Specifically, there is no support in the original disclosure [2].

 To overcome this objection, applicant may attempt to demonstrate 
that the original disclosure establishes that he or she was in 
possession of the amended subject matter or [3].

Examiner Note:

1.In bracket 1, specify whether new drawing or amendment to 
the drawing, title or specification.

2.In bracket 2, specifically identify what is new matter so that 
the basis for the objection is clear.

3.In bracket 3, insert specific suggestion how the objection 
may be overcome depending on the basis; such as, “the broken 
line showing of environmental structure in Fig. 1 of the new drawing 
may be omitted to correspond to the original drawing” or “the 
title may be amended by deleting the reference to environmental 
structure”.




 

III.35 U.S.C. 112, SECOND PARAGRAPH

Defects in claim language give rise to a rejection of 
the claim under the second paragraph of 35 U.S.C. 
112. The fact that claim language, including terms of 
degree, may not be precise, does not automatically 
render the claim indefinite under 35 U.S.C. 112, second 
paragraph. “[T]he definiteness of the language 
employed must be analyzed – not in a vacuum, but 
always in light of the teachings of the prior art and 
of 
the particular application disclosure as it would be 
interpreted by one possessing the ordinary level of 
skill in the pertinent art.” In re Moore, 439 F.2d 
1232, 
1235, 169 USPQ 236, 238 (CCPA 1971). A claim 
may appear indefinite when read in a vacuum, but 
may be definite upon reviewing the application disclosure 
or prior art teachings. Moreover, an otherwise 
definite claim in a vacuum may be uncertain when 
reviewing the application disclosure and prior art. 
Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. 
See also MPEP § 2173.05(b).

Use of phrases in the claim such as “or similar article,” 
“or the like,” or equivalent terminology has been 
held to be indefinite. See Ex parte Pappas, 
23 
USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). However, 
the use of broadening language such as “or 
the 
like,” or “or similar article” in the title when 
directed to the environment of the article embodying 
the design should not be the basis for a rejection under 
35 U.S.C. 112, second paragraph. See MPEP 
§
 
1503.01, subsection I.

 Examiners are reminded that there is no per serule, and that the definiteness of claim language must 
be evaluated on the facts and circumstances of each 
application. The following form paragraphs may be 
used.

¶ 15.22.02 Rejection, 35 U.S.C. 112, 2nd Paragraph (“Or 
the Like” In Claim)

The claim is rejected under 35 U.S.C. 112, second paragraph, 
as being indefinite for failing to particularly point out and distinctly 
claim the subject matter which applicant regards as the 
invention. The claim is indefinite because of the use of the phrase 
“[1]” following the title. Cancellation of said phrase in the claim 
and each occurrence of the title throughout the papers, except the 
oath or declaration, will overcome the rejection. See Ex parte 
Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 
1.153.

Examiner Note:

1.This rejection should be used where there is another rejection 
in the Office action. For issue with an examiner’s amendment, see 
form paragraph 15.69.01.

2.In bracket 1, insert --or the like-- or --or similar article--.

3.This form paragraph should not be used when “or the like” or 
“or similar article” in the title is directed to the environment of the 
article embodying the design.

¶ 15.69.01 Remove Indefinite Language (“Or The Like”) 
by Examiner’s Amendment

The phrase [1] in the claim following the title renders the claim 
indefinite. By authorization of [2] in a telephone interview on [3], 
the phrase has been cancelled from the claim and at each occurrence 
of the title throughout the papers, except the oath or declaration 
(35 U.S.C. 112, second paragraph, and 37 CFR 1.153). See 
Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

Examiner Note:

In bracket 1, insert objectionable phrase, e.g., --or the like--, --
or similar article--, etc.

Rejections under 35 U.S.C. 112, second paragraph, 
should be made when the scope of protection sought 
by the claim cannot be determined from the disclosure. 
For instance, a drawing disclosure in which the 
boundaries between claimed (solid lines) and 
unclaimed (broken lines) portions of an article are not 
defined or cannot be understood may be enabling 
under 35 U.S.C. 112, first paragraph, in that the shape 
and appearance of the article can be reproduced, but 
such disclosure fails to particularly point out and distinctly 
claim the subject matter that applicant regards 
as the invention. Form paragraph 15.22 may be used.

¶ 15.22 Rejection, 35 U.S.C. 112, 2nd Paragraph

The claim is rejected under 35 U.S.C. 112, second paragraph, 
as being indefinite for failing to particularly point out and distinctly 
claim the subject matter which applicant regards as the 
invention.

The claim is indefinite [1].

Examiner Note:

1.Use this form paragraph when the scope of the claimed 
design cannot be determined.

2.In bracket 1, provide a full explanation of the basis for the 
rejection.

The claim should be rejected as indefinite when it 
cannot be determined from the designation of the 
design as shown in the drawing, referenced in the title 
and described in the specification what article of manufacture 
is being claimed, e.g., a design claimed as a 
“widget” which does not identify a known or recognizable 
article of manufacture. The following form 
paragraphs may be used.




 

¶ 15.22.03 Rejection, 35 U.S.C. 112, Second Paragraph 
(Title Fails to Specify a Known Article of Manufacture)

The claim is rejected under 35 U.S.C. 112, second paragraph, 
as indefinite in that the title, as set forth in the claim, fails to identify 
an article of manufacture and the drawing disclosure does not 
inherently identify the article in which the design is embodied. Ex 
parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 
1992). Therefore, any attempt to clarify the title by specifying the 
article in which the design is embodied may introduce new matter. 
See 35 U.S.C. 132 and 37 CFR 1.121.

¶ 15.21.01 Rejection, 35 U.S.C. 112 (Second Paragraph) 
(Information Requested)

The claim is rejected for failing to particularly point out and 
distinctly claim the invention as required in 35 U.S.C. 112, second 
paragraph. The title of the article in which the design is embodied 
or applied is too ambiguous and therefore indefinite for the examiner 
to make a proper examination of the claim under 37 CFR 
1.104.

Applicant is therefore required to provide a sufficient explanation 
of the nature and intended use of the article in which the 
claimed design is embodied or applied, so that a proper classification 
and reliable search can be made. See 37 CFR 1.154(b)(1); 
MPEP 1503.01. Additional information, if available, regarding 
analogous fields of search, pertinent prior art, advertising brochures 
and the filing of copending utility applications would also 
prove helpful. If a utility application has been filed, please furnish 
its application number.

This information should be submitted in the form of a separate 
paper, and should not be inserted in the specification (37 CFR 
1.56). See also 37 
CFR 1.97, 1.98 and 1.99.

Where the design claim would otherwise be patentable 
but for the presence of any rejection under 
35 
U.S.C. 112, first and/or second paragraphs, form 
paragraph 15.58.01 may be used.

¶ 15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 
Rejections)

The claimed design is patentable over the references cited. 
However, a final determination of patentability will be made upon 
resolution of the above rejection.

Form paragraphs 15.38 and 15.40.01 may be used 
in a second or subsequent actioh, where appropriate 
(see MPEP § 1504.02).

1504.05Restriction [R-5]

General principles of utility restriction are set forth 
in Chapter 800 of the MPEP. These principles are 
also applicable to design restriction practice with the 
exception of those differences set forth in this section.

Unlike a utility patent application, which can contain 
plural claims directed to plural inventions, a 
design patent application may only have a single 
claim. More than one embodiment of a design 
may be protected by a single claim. However, such 
embodiments may be presented only if they involve a 
single inventive concept according to the obviousness-
type double patenting practice for designs. In re 
Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). Therefore, the examiner will require restriction 
in each design application which contains more 
than one patentably distinct design.

Restriction will be required under 35 U.S.C. 121 if 
a design patent application claims multiple 
designs that are  patentably distinct from each other 
. The issue of whether a search and examination of 
an entire application can be made without serious burden 
to an examiner (as noted in MPEP § 803) is notapplicable to design applications when determining 
whether a restriction requirement should be made. 
Clear admission on the record by the applicant that 
the embodiments are not patentably distinct will not 
overcome a requirement for restriction if the embodiments 
do not meet the following two requirements: 
(A) the embodiments must have overall 
appearances with basically the same design characteristics; 
and (B) the differences between the embodiments 
must be insufficient to patentably distinguish 
one design from the other. Regarding the second 
requirement, without evidence, such an admission is 
merely a conclusionary statement. If multiple 
designs are held to be patentably indistinct and can be 
covered by a single claim, any rejection of one over 
prior art will apply equally to all. Ex parte Appeal No. 
315-40, 152 USPQ 71 (Bd. App. 1965).

I.INDEPENDENT INVENTIONS

Design inventions are independent if there is no 
apparent relationship between two or more disparate 
articles disclosed in the drawings; for example, a pair 
of eyeglasses and a door handle; a bicycle and a camera; 
an automobile and a bathtub. Also note examples 
in MPEP § 806.06. Restriction in such cases is 
clearly proper. This situation may be rarely presented 
since design patent applications are seldom filed containing 
disclosures of independent articles.

II.DISTINCT INVENTIONS

In determining patentable distinctness, the 
examiner must compare the overall appearances of the 
multiple designs. Each design must be considered as a 




 

whole, i.e., the elements of the design are not considered 
individually as they may be when establishing a 
prima facie case of obviousness under 35 U.S.C. 
103(a). Designs are not distinct inventions if: (A) the 
multiple designs have overall appearances with basically 
the same design characteristics; and (B) the differences 
between the multiple designs are insufficient 
to patentably distinguish one design from the other. 
Differences may be considered patentably insufficient 
when they are de minimis or obvious to a designer of 
ordinary skill in the art. Therefore, in determining the 
question of patentable distinctness under 35 U.S.C. 
121 in a design application, a search of the prior art 
may be necessary. Both of the above considerations 
are important. Differences between the designs may 
prove to be obvious in view of the prior art, but if the 
overall appearances are not basically the same, the 
designs remain patentably distinct. Embodiments 
claiming different scopes of the same design can be 
patentably distinct using the two-step analysis above. 
When an application illustrates a component, which is 
a subcombination of another embodiment, the subcombination 
often has a distinct overall appearance 
and a restriction should be required. When an application 
illustrates only a portion of the design, which is 
the subject of another embodiment, that portion often 
has a distinct overall appearance and a restriction 
should be required.

A.Multiple Embodiments - Difference in 
Appearance

It is permissible to illustrate more than one embodiment 
of a design invention in a single application. 
However, such embodiments may be presented only if 
they involve a single inventive concept . Two 
designs involve a single inventive concept when the 
two designs are patentably indistinct according to the 
standard of obviousness-type double patenting. See 
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). Embodiments that are patentably distinct over 
one another do not constitute a single inventive concept 
and thus may not be included in the same design 
application. In re Platner, 155 USPQ 222 (Comm’r 
Pat. 1967). The disclosure of plural embodiments 
does not require or justify more than a single 
claim,
 
which claim must be in the formal terms 
stated 
in MPEP § 1503.01, subsection III. The specification 
should make clear that multiple embodiments 
are disclosed and should particularize the differences 
between the embodiments. If the disclosure of any 
embodiment relies on the disclosure of another 
embodiment for completeness to satisfy the requirements 
of 35 U.S.C. 112, first paragraph, the differences 
between the embodiments must be identified 
either in the figure descriptions or by way of a 
descriptive statement in the specification of the 
application as filed. For example, the second embodiment 
of a cabinet discloses a single view showing 
only the difference in the front door of the cabinet of 
the first embodiment; the figure description should 
state that this view “is a second embodiment of Figure 
1, the only difference being the configuration of the 
door, it being understood that all other surfaces are the 
same as those of the first embodiment.” This type of 
statement in the description is understood to incorporate 
the disclosure of the first embodiment to complete 
the disclosure of the second embodiment. 
However, in the absence of such a statement in the 
specification of an application as filed, the disclosure 
of one embodiment will normally not be permitted to 
provide antecedent basis for any written or visual 
amendment to the disclosure of other embodiments.

The obviousness standard under 35 U.S.C. 103(a)
must be applied in determining whether multiple 
embodiments may be retained in a single application. 
See MPEP § 1504.03. That is, it must first be determined 
whether the embodiments have overall appearances 
that are basically the same as each other. If the 
appearances of the embodiments are considered to be 
basically the same, then it must be determined 
whether the differences are either minor between the 
embodiments and not a patentable distinction, or 
obvious to a designer of ordinary skill in view of the 
analogous prior art . If embodiments meet both of the 
above criteria they may be retained in a single application. 
If embodiments do not meet either one of the 
above criteria, restriction must be required. It should 
be noted, that if the embodiments do not have overall 
appearances that are basically the same, restriction 
must be required since their appearances are patentably 
distinct. In such case it doesn’t matter for restriction 
purposes, if the differences between the 
appearances of the embodiments are shown to be 
obvious in view of analogous prior art.




 

Form paragraph 15.27.02 or 15.27.03, if appropriate, 
may be used to notify applicant that restriction is 
not required because the embodiments are not patentably 
distinct. 

¶ 15.27.02 Restriction Not Required - Change In 
Appearance (First Action - Non Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 
(CCPA 1959). Embodiments that are patentably distinct from one 
another do not constitute a single inventive concept and thus may 
not be included in the same design application. See In re Platner, 
155 USPQ 222 (Comm’r Pat. 1967).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the differences between the appearances of 
the embodiments are considered minor and patentably indistinct, 
or are shown to be obvious in view of analogous prior art cited. 
Accordingly, they are deemed to be obvious variations and are 
being retained and examined in the same application. Any rejection 
of one embodiment over prior art will apply equally to all 
other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 
71 (Bd. App. 1965). No argument asserting patentability based on 
the differences between the embodiments will be considered once 
the embodiments have been determined to comprise a single 
inventive concept. Failure of applicant to traverse this determination 
in reply to this action will be considered an admission of lack 
of patentable distinction between the above identified embodiments.


Examiner Note:

In bracket 3, add embodiments as necessary.

¶ 15.27.03 Restriction Not Required - Change In 
Appearance (First Action Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1] 

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 
(CCPA 1959). Embodiments that are patentably distinct from one 
another do not constitute a single inventive concept and thus may 
not be included in the same design application. See In re Platner, 
155 USPQ 222 (Comm’r Pat. 1967).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the differences between the appearances of 
the embodiments are considered minor and patentably indistinct, 
or are shown to be obvious in view of analogous prior art cited. 
Accordingly, they are deemed to be obvious variations and are 
being retained and examined in the same application. 

Examiner Note:

In bracket 3, add embodiments as necessary.

The following form paragraphs may be used in a 
restriction requirement. Examiners must include a 
brief explanation of the differences between the 
appearances of the embodiments that render them patentably 
distinct.

¶ 15.27 Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 
(CCPA 1959). Embodiments that are patentably distinct from one 
another do not constitute a single inventive concept and thus may 
not be included in the same design application. See In re Platner, 
155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably 
distinct designs.

Because of the differences identified, the embodiments are 
considered to either have overall appearances that are not basically 
the same, or if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown to be 
obvious in view of analogous prior art.

The above embodiments divide into the following patentably 
distinct groups of designs:

Group I: Embodiment [5]

Group II: Embodiment [6]

[7]

Restriction is required under 35 U.S.C. 121 to one of the above 
identified patentably distinct groups of designs.

A reply to this requirement must include an election of a single 
group for prosecution on the merits, even if this requirement is 
traversed, 37 
CFR 1.143. Any reply that does not include election 
of a single group will be held nonresponsive. Applicant is also 
requested to direct cancellation of all drawing figures and the corresponding 
descriptions which are directed to the nonelected 
groups.

Should applicant traverse this requirement on the grounds that 
the groups are not patentably distinct, applicant should present 
evidence or identify such evidence now of record showing the 
groups to be obvious variations of one another. If the groups are 
determined not to be patentably distinct and they remain in this 
application, any rejection of one group over prior art will apply 
equally to all other embodiments. See Ex parte Appeal No. 315-
40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability 
based on the differences between the groups will be considered 
once the groups have been determined to comprise a 
single inventive concept.

In view of the above requirement, action on the merits is 
deferred pending compliance with the requirement in accordance 




 

with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 
1960).

Examiner Note:

1.In bracket 3, add embodiments as necessary.

2.In bracket 4, insert an explanation of the difference(s) 
between the embodiments.

3. In bracket 7, add groups as necessary.

¶ 15.27.01 Restriction Under 35 U.S.C. 121 (Obvious 
Variations Within Group)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1] 

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 
(CCPA 1959). Embodiments that are patentably distinct from one 
another do not constitute a single inventive concept and thus may 
not be included in the same design application. See In re Platner, 
155 USPQ 222 (Comm’r Pat. 1967).

The above embodiments divide into the following patentably 
distinct groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

[6]

The embodiments disclosed within each group have overall 
appearances that are basically the same. Furthermore, the differences 
between them are considered minor and patentably indistinct, 
or are shown to be obvious in view analogous prior art cited. 
Therefore, they are considered by the examiner to be obvious 
variations of one another within the group. These embodiments 
thus comprise a single inventive concept and are grouped 
together. However, the [7] patentably distinguishes each group 
from the other(s).

Because of the differences identified, the embodiments of each 
Group are considered to either have overall appearances that are 
not basically the same, or if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown to 
be obvious in view of analogous prior art.

Restriction is required under 35 U.S.C. 121 to one of the patentably 
distinct groups of the designs.

A reply to this requirement must include an election of a single 
group for prosecution on the merits, even if this requirement is 
traversed, 37 
CFR 1.143. Any reply that does not include election 
of a single group will be held nonresponsive. Applicant is also 
requested to direct cancellation of all drawing figures and the corresponding 
descriptions which are directed to the nonelected 
groups.

Should applicant traverse this requirement on the grounds that 
the groups are not patentably distinct, applicant should present 
evidence or identify such evidence now of record showing the 
groups to be obvious variations of one another. If the groups are 
determined not to be patentably distinct and they remain in this 
application, any rejection of one group over prior art will apply 
equally to all other groups. See Ex parte Appeal No. 315-40, 152 
USPQ 71 (Bd. App. 1965). No argument asserting patentability 
based on the differences between the groups will be considered 
once the groups have been determined to comprise a single inventive 
concept.

In view of the above requirement, action on the merits is 
deferred pending compliance with the requirement in accordance 
with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 
1960).

Examiner Note:

1.In bracket 3, add embodiments as necessary.

2.In bracket 6, add groups as necessary.

3. In bracket 7, insert an explanation of the difference(s) 
between the groups.

¶ 15.28 Telephone Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs. [1] 

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 123 USPQ 210 (CCPA 1959). 
Embodiments that are patentably distinct from one another do not 
constitute a single inventive concept and thus may not be included 
in the same design application. See In re Platner, 155 USPQ 222 
(Comm’r Pat. 1967). The [4] create(s) patentably distinct designs. 
See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

Because of the differences identified, the embodiments of each 
Group are considered to either have overall appearances that are 
not basically the same, or, if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown 
to be obvious in view of analogous prior art.

The above disclosed embodiments divide into the following 
patentably distinct groups of designs:

Group I: Embodiment [5]

Group II: Embodiment [6]

[7]

Restriction is required under 35 U.S.C. 121 to one of the patentably 
distinct groups of designs.

During a telephone discussion with [8] on [9], a provisional 
election was made [10] traverse to prosecute the design(s) of 
group [11]. Affirmation of this election should be made by applicant 
in replying to this Office action.

Group [12] is withdrawn from further consideration by the 
examiner, 37 CFR 1.142(b), as being for a nonelected design(s).

Examiner Note:

1.In bracket 3, add embodiments as necessary.

2.In bracket 4, insert an explanation of the difference(s) 
between the embodiments.

3.In bracket 7, add groups as necessary.

4.In bracket 10, insert --with-- or --without--.




 

¶ 15.28.01 Telephone Restriction Under 35 U.S.C.121(Obvious Variations Within Group)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be 
included in the same design application only if they are patentably 
indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 
(CCPA 1959). Embodiments that are patentably distinct from one 
another do not constitute a single inventive concept and thus may 
not be included in the same design application. See In re Platner, 
155 USPQ 222 (Comm’r Pat. 1967).

The above embodiments divide into the following patentably 
distinct groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

[6]

The embodiments disclosed within each group have overall 
appearances that are basically the same. Furthermore, the differences 
between them are considered minor and patentably indistinct, 
or are shown to be obvious in view of analogous prior art 
cited. Therefore, they are considered by the examiner to be obvious 
variations of one another within the group. These embodiments 
thus comprise a single inventive concept and are grouped 
together. However, the [7] patentably distinguishes each group 
from the other(s).

Because of the differences identified, the embodiments of each 
Group are considered to either have overall appearances that are 
not basically the same, or if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown to 
be obvious in view of analogous prior art.

Restriction is required under 35 U.S.C. 121 to one of the patentably 
distinct groups of designs.

During a telephone discussion with [8] on [9], a provisional 
election was made [10] traverse to prosecute the design(s) of 
group [11]. Affirmation of this election should be made by applicant 
in replying to this Office action.

Group [12] is withdrawn from further consideration by the 
examiner, 37 CFR 1.142(b), as being for a nonelected design(s).

Examiner Note:

1.In bracket 3, add embodiments as necessary.

2.In bracket 6, add groups as necessary.

3.In bracket 7, insert an explanation of the differences between 
the groups.

4.In bracket 10, insert --with--or --without--.

¶ 15.31 Provisional Election Required (37 CFR 1.143)

Applicant is advised that the reply to be complete must include 
a provisional election of one of the enumerated designs, even 
though the requirement may be traversed (37 CFR 1.143).

B.Combination/Subcombination - Difference in 
Scope

A design claim covers the entire design as a whole. 
Furthermore, claim protection to the whole design 
does not extend to any individual part or portion 
thereof. See KeyStone Retaining Wall Systems Inc. v. 
Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. 
Cir. 1993). Embodiments directed to a design as a 
whole (combination) as well as individual parts or 
portions (subcombination) thereof may not be 
included in a single application if the appearances are 
patentably distinct. In such instance restriction would 
be required since patentably distinct combination/subcombination 
subject matter must be supported by separate 
claims. However, a design claim may cover 
embodiments of different scope directed to the same 
inventive concept within a single application if the 
designs are not patentably distinct. In re Rubinfield, 
270 F.2d 391, 123 USPQ 210 (CCPA 1959). The 
court held that the inventive concept of a design is not 
limited to its embodiment in a single specific article, 
and as long as the various embodiments are not patentably 
distinct, they may be protected by a single 
claim. Blumcraft of Pittsburgh v. Ladd, 144 USPQ 
562 (D.D.C. 1965). The determination that the design 
of the subcombination/element is patentably indistinct 
from the combination means that the designs are not 
patentable (novel and unobvious) over each other and 
may remain in the same application. If the embodiments 
are patentably distinct, the designs are considered 
to be separate inventions which require separate 
claims, and restriction to one or the other is necessary. 
See In re Kelly, 200 USPQ 560 (Comm’r Pat. 1978); 
Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 
(Comm’r Pat. 1914); Ex parte Heckman, 135 USPQ 
229 (P.O. Super. Exam. 1960). In determining 
whether embodiments of different scope can be 
retained in a single application they must have overall 
appearances that are basically the same, and the difference 
in scope must be minor and not a patentable 
distinction. That is, they must, by themselves, be considered 
obvious over each other under 35 U.S.C. 
103(a) without the aid of analogous prior art. The reason 
for this, as stated above, is because claim protection 
to the whole design does not extend to any 
individual part or portion thereof. Therefore, if the 
difference in scope between embodiments has an 
impact on the overall appearance that distinguishes 




 

one over the other, they must be restricted since the 
difference in scope creates patentably distinct designs 
that must be supported by separate claims. Form paragraph 
15.27.04 or 15.27.05, if appropriate, may be 
used to notify applicant that restriction is not required 
because the embodiments required are not patentably 
distinct. 

¶ 15.27.04 Restriction Not Required – Change In Scope 
(First Action – Non Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Designs which involve a change in scope may be included in 
the same design application only if they are patentably indistinct. 
However, design patent protection does not extend to patentably 
distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 
69, 204 O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh 
v. Ladd, 144 USPQ 562 (D.D.C. 1965).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the difference in scope between embodiments 
is considered minor and patentably indistinct. Accordingly, they 
are deemed to be obvious variations and are being retained and 
examined in the same application. Any rejection of one embodiment 
over prior art will apply equally to all other embodiments. 
Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No 
argument asserting patentability based on the differences between 
the embodiments will be considered once the embodiments have 
been determined to comprise a single inventive concept. Failure 
of applicant to traverse this determination in reply to this Office 
action will be considered an admission of lack of patentable distinction 
between the embodiments. 

Examiner Note:

In bracket 3, add embodiments as necessary.

¶ 15.27.05 Restriction Not Required – Change In Scope 
(First Action Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Designs which involve a change in scope may be included in 
the same design application only if they are patentably indistinct. 
However, design patent protection does not extend to patentably 
distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 
69, 204 O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh 
v. Ladd, 144 USPQ 562 (D.D.C. 1965).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the difference in scope between embodiments 
is considered minor and patentably indistinct. Accordingly, they 
are deemed to be obvious variations and are being retained and 
examined in the same application. 

Examiner Note:

In bracket 3, add embodiments as necessary.

Form paragraph 15.29 or 15.30, if appropriate, may 
be used to make a restriction requirement.

¶ 15.29 Restriction Under 35 U.S.C. 121 (Segregable 
Parts or Combination/Subcombination)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4].

[5]

Restriction to one of the following inventions is required under 
35 
U.S.C. 121:

Group I – Embodiment [6]

Group II – Embodiment [7] 

[8]

The designs as grouped are distinct from each other since 
under the law a design patent covers only the invention disclosed 
as an entirety, and does not extend to patentably distinct segregable 
parts; the only way to protect such segregable parts is to apply 
for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 
1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 
144 USPQ 562 (D.D.C. 1965). It is further noted that patentably 
distinct combination/subcombination subject matter must be supported 
by separate claims, whereas only a single claim is permissible 
in a design patent application. See In re Rubinfield, 270 F.2d 
391, 123 USPQ 210 (CCPA 1959).

[9]

Because the designs are distinct for the reason(s) given above, 
and have acquired separate status in the art, restriction for examination 
purposes as indicated is proper (35 U.S.C. 121).

A reply to this requirement must include an election of a single 
group for prosecution on the merits, even if this requirement is 
traversed. 37 
CFR 1.143. Any reply that does not include an election 
of a single group will be held nonresponsive. Applicant is 
also requested to direct cancellation of all drawing figures and the 
corresponding descriptions which are directed to the nonelected 
groups.

Should applicant traverse this requirement on the grounds that 
the groups are not patentably distinct, applicant should present 
evidence or identify such evidence now of record showing the 
groups to be obvious variations of one another. If the groups are 
determined not to be patentably distinct and they remain in this 
application, any rejection of one group over the prior art will 
apply equally to all other groups. See Ex parte Appeal No. 315-40, 
152 USPQ 71 (Bd. App. 1965). No argument asserting patentability 
based on the differences between the groups will be considered 
once the groups have been determined to comprise a single inventive 
concept.

In view of the above requirement, action on the merits is 
deferred pending compliance with the requirement in accordance 
with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 
1960).

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.In bracket 8, add groups as necessary.




 

3.In bracket 9, add comments, if necessary.

¶ 15.30 Telephone Restriction Under 35 U.S.C. 121(Segregable Parts or Combination/Subcombination)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4].

[5]

Restriction to one of the following inventions is required under 
35 U.S.C. 121:

Group I – Embodiment [6]

Group II – Embodiment [7]

[8]

The designs as grouped are distinct from each other since 
under the law a design patent covers only the invention disclosed 
as an entirety, and does not extend to patentably distinct segregable 
parts; the only way to protect such segregable parts is to apply 
for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 
1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 
144 USPQ 562 (D.D.C. 1965). It is further noted that patentably 
distinct combination/subcombination subject matter must be supported 
by separate claims, whereas only a single claim is permissible 
in a design patent application. See In re Rubinfield, 270 F.2d 
391, 123 USPQ 210 (CCPA 1959).

[9]

During a telephone discussion with [10] on [11], a provisional 
election was made [12] traverse to prosecute the invention of 
Group [13]. Affirmation of this election should be made by applicant 
in replying to this Office action.

Group [14] withdrawn from further consideration by the examiner, 
37 CFR 1.142(b) as being for a nonelected invention.

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.In bracket 8, add groups as necessary.

3.In bracket 9, insert additional comments, if necessary.

Form paragraph 15.27.06 or 15.27.07, if appropriate, 
may be used to notify applicant that restriction is 
not required because the designs are not patentably 
distinct.

¶ 15.27.06 Restriction Not Required (Change in 
Appearance and Scope – First Action Non Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1] drawn to a [2].

Embodiment 2 - Figs. [3] drawn to a [4].

[5]

Embodiments [6] involve a difference in appearance. Multiple 
embodiments of a single inventive concept may be included in the 
same design application only if they are patentably indistinct. In 
re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). 
Embodiments that are patentably distinct from one another do not 
constitute a single inventive concept and thus may not be included 
in the same design application. In re Platner, 155 USPQ 222 
(Comm’r 
Pat.
 
1967). 

Embodiment(s) [7] directed to the combination(s) in relation to 
Embodiment(s) [8] directed to the subcombination(s)/element(s). 
Designs which involve a change in scope may be included in the 
same design application only if they are patentably indistinct. 
However, design protection does not extend to patentably distinct 
segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 
O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 
144 USPQ 562 (D.D.C.1965).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the differences between embodiments are 
considered minor and patentably indistinct, or are shown to be 
obvious in view of analogous prior art cited. Accordingly, they are 
deemed to be obvious variations and are being retained and examined 
in the same application. Any rejection of one embodiment 
over prior art will apply equally to all other embodiments. Ex 
parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No 
argument asserting patentability based on the differences between 
the embodiments will be considered once the embodiments have 
been determined to comprise a single inventive concept. Failure 
of applicant to traverse this determination in reply to this action 
will be considered an admission of lack of patentable distinction 
between the embodiments.

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.Insert an explanation of the differences between the designs 
in the explanations of the embodiments; for example, Figs. 1 – 5 
directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.

3.It is possible and proper that embodiments may be listed in 
both explanatory paragraphs.

¶ 15.27.07 Restriction Not Required (Change in 
Appearance and Scope – First Action Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4]. 

[5]

Embodiment(s) [6] involve a difference in appearance. Multiple 
embodiments of a single inventive concept may be included in 
the same design application only if they are patentably indistinct. 
In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). 
Embodiments that are patentably distinct from one another do not 
constitute a single inventive concept and thus may not be included 
in the same design application. In re Platner, 155 USPQ 222 
(Comm’r 
Pat.
 
1967).

Embodiment(s) [7] directed to the combination(s) in relation to 
Embodiment(s) [8] directed to the subcombination(s)/element(s). 
Designs which involve a change in scope may be included in the 
same design application only if they are patentably indistinct. 
However, design protection does not extend to patentably distinct 
segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 
O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 
144 USPQ 562 (D.D.C.1965).

The above identified embodiments are considered by the 
examiner to present overall appearances that are basically the 
same. Furthermore, the differences between embodiments are 
considered minor and patentably indistinct, or are shown to be 
obvious in view of analogous prior art cited. Accordingly, they 
were deemed to be obvious variations and are being retained and 




 

examined in the same application. Accordingly, they were deemed 
to comprise a single inventive concept and have been examined 
together.

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.Insert an explanation of the differences between the designs 
in the explanations of the embodiments; for example, Figs. 1 – 5 
directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.

3.It is possible and proper that embodiments may be listed in 
both explanatory paragraphs.

The following form paragraphs may be used in a 
restriction requirement.

Examiners must include a brief explanation of the 
differences between embodiments that render them 
patentably distinct.

¶ 15.27.08 Restriction with Differences in Appearance and 
Scope

This application discloses the following embodiments: 

Embodiment 1: Figs. [1] drawn to a [2].

Embodiment 2: Figs. [3] drawn to a [4].

[5]

The above embodiments divide into the following patentably 
distinct groups of designs:

Group I: Embodiment [6]

Group II: Embodiment [7]

[8]

Group(s) [9] involve a difference in appearance. Multiple 
embodiments of a single inventive concept may be included in the 
same design application only if they are patentably indistinct. In 
re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). 
Embodiments that are patentably distinct from one another do not 
constitute a single inventive concept and thus may not be included 
in the same design application. In re Platner, 155 USPQ 222 
(Comm’r 
Pat.
 
1967). The [10] creates patentably distinct designs.

Because of the differences identified, the embodiments are 
considered to either have overall appearances that are not basically 
the same, or if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown to be 
obvious in view of analogous prior art.

Group(s) [11] directed to the combination(s) in relation to 
Group(s) [12] directed to the subcombination(s)/element(s). The 
designs as grouped are distinct from each other since under the 
law a design patent covers only the design disclosed as an entirety, 
and does not extend to patentably distinct segregable parts; the 
only way to protect such segregable parts is to apply for separate 
patents. Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r 
Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 
USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination 
subject matter, if patentably distinct, must be supported 
by separate claims, whereas only a single claim is 
permissible in a design patent application. In re Rubinfield, 270 
F.2d 391, 123 USPQ 210 (CCPA 1959).

In any groups that include multiple embodiments, the embodiments 
are considered by the examiner to be obvious variations of 
one another within the group and, therefore, patentably indistinct. 
These embodiments thus comprise a single inventive concept and 
are grouped together.

Restriction is required under 35 U.S.C. 121 to one of the patentably 
distinct groups of designs.

A reply to this requirement must include an election of a single 
group for prosecution on the merits even if this requirement is traversed. 
37 CFR 1.143. Any reply that does not include an election 
of a single group will be held nonresponsive. Applicant is also 
requested to direct cancellation of all drawing figures and the corresponding 
descriptions which are directed to the nonelected 
groups.

Should applicant traverse this requirement on the grounds that 
the groups are not patentably distinct, applicant should present 
evidence or identify such evidence now of record showing the 
groups to be obvious variations of one another. If the groups are 
determined not to be patentably distinct and they remain in this 
application, any rejection of one group over prior art will apply 
equally to all other groups. Ex parte Appeal No. 315-40, 152 
USPQ 71 (Bd. App. 1965). No argument asserting patentability 
based on the differences between the groups will be considered 
once the groups have been determined to comprise a single inventive 
concept.

In view of the above requirement, action on the merits is 
deferred pending compliance with the requirement in accordance 
with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 
1960).

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.In bracket 8, add embodiments as necessary.

3.Insert an explanation of the differences between the designs 
in the explanations of the embodiments; for example, Figs. 1 – 5 
directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.

4.It is possible and proper that embodiments may be listed in 
both explanatory paragraphs.

5.In bracket 10, insert an explanation of the differences 
between the designs.

¶ 15.28.02 Telephone Restriction with Differences in 
Appearance and Scope

This application discloses the following embodiments:

Embodiment 1: Figs. [1] drawn to a [2]. 

Embodiment 2: Figs. [3] drawn to a [4].

[5]

The above embodiments divide into the following patentably 
distinct groups of designs:

Group I: Embodiment [6]

Group II: Embodiment [7]

[8]

Group(s) [9] involve a difference in appearance. Multiple 
embodiments of a single inventive concept may be included in the 
same design application only if they are patentably indistinct. In 
re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 
1959). 
Embodiments that are patentably distinct from one another do not 
constitute a single inventive concept and thus may not be included 
in the same design application. In re Platner, 155 USPQ 222 
(Comm’r 
Pat.
 
1967). The [10] creates patentably distinct designs.




 

Because of the differences identified, the embodiments are 
considered to either have overall appearances that are not basically 
the same, or if they are basically the same, the differences 
are not minor and patentably indistinct or are not shown to be 
obvious in view of analogous prior art.

Group(s) [11] directed to the combination(s) in relation to 
Group(s) [12] directed to the subcombination(s)/element(s). The 
designs as grouped are distinct from each other since under the 
law a design patent covers only the design disclosed as an entirety, 
and does not extend to patentably distinct segregable parts; the 
only way to protect such segregable parts is to apply for separate 
patents. Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r 
Pat. 1914); Blumcraft of Pittsburg v. Ladd, 144 USPQ 562 
(D.D.C.1965). It is further noted that combination/subcombination 
subject matter, if patentably distinct, must be supported by 
separate claims, whereas only a single claim is permissible in a 
design patent application. In re Rubinfield, 270 F.2d 391, 123 
USPQ 210 (CCPA 1959).

In any groups that include multiple embodiments, the embodiments 
are considered by the examiner to be obvious variations of 
one another within the group and, therefore, patentably indistinct. 
These embodiments thus comprise a single inventive concept and 
are grouped together.

Restriction is required under 35 U.S.C. 121 to one of the patentably 
distinct groups of designs.

During a telephone discussion with [13] on [14], a provisional 
election was made [15] traverse to prosecute the invention of 
Group [16]. Affirmation of this election should be made by applicant 
in replying to this Office action.

Group [17] is withdrawn from further consideration by the 
examiner, 37 CFR 1.142(b), as being for a nonelected invention.

Examiner Note:

1.In bracket 5, add embodiments as necessary.

2.In bracket 8, add groups as necessary.

3.Insert an explanation of the differences between the designs 
in the explanations of the embodiments; for example, Figs. 1 – 5 
directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.

4.It is possible and proper that embodiments may be listed in 
both explanatory paragraphs.

5.In bracket 10, insert an explanation of the differences 
between the designs.

6.In bracket 15, insert --with-- or --without--. 

¶ 15.33 Qualifying Statement To Be Used In Restriction 
When A Common Embodiment Is Included In More Than 
One Group

The common embodiment is included in more than a single 
group as it is patentably indistinct from the other embodiment(s) 
in those groups and to give applicant the broadest possible choices 
in his or her election. If the common embodiment is elected in this 
application, then applicant is advised that the common embodiment 
should not be included in any continuing application to 
avoid a rejection on the ground of double patenting under 35 
U.S.C. 171 in the new application.

The following form paragraphs may be used to 
notify applicant that the nonelected invention(s) are 
withdrawn from consideration.

¶ 15.34 Groups Withdrawn From Consideration After 
Traverse

Group [1] withdrawn from further consideration by the examiner, 
37 
CFR 1.142(b), as being for a nonelected design, the 
requirement having been traversed in the reply filed on [2].

¶ 15.35 Cancel Nonelected Design (Traverse)

The restriction requirement maintained in this application is or 
has been made final. Applicant must cancel Group [1] directed to 
the design(s) nonelected with traverse in the reply filed on [2], or 
take other timely appropriate action (37 CFR 1.144). 

¶ 15.36 Groups Withdrawn From Consideration Without 
Traverse

Group [1] withdrawn from further consideration by the examiner, 
37 
CFR 1.142(b), as being for the nonelected design. Election 
was made without traverse in the reply filed on [2].

¶ 15.37 Cancellation of Nonelected Groups, No Traverse

In view of the fact that this application is in condition for 
allowance except for the presence of Group [1] directed to a 
design or designs nonelected without traverse in the reply filed on 
[2], and without the right to petition, such Group(s) have been 
canceled.

III.TRAVERSAL OF RESTRICTION REQUIREMENT


If a response to a restriction requirement includes 
an election with traverse on the grounds that the 
groups are not patentably distinct, applicant must 
present evidence or identify such evidence of record 
showing the groups to be obvious variations of one 
another. Traversal of a restriction requirement alone 
without an explanation in support thereof will be 
treated as an election without traverse. See MPEP § 
818.03(a) and form paragraph 8.25.02.

A traversal of a restriction requirement based on 
there being no serious burden to an examiner to 
search and examine an entire application (as noted in 
MPEP § 803) is not applicable to design patent applications. 
The fact that the embodiments may be 
searched together cannot preclude a requirement for 
restriction if their appearances are considered patentably 
distinct, since patentably distinct embodiments 
cannot be supported by a single formal design claim. 
Also, clear admission on the record by the applicant 
that the embodiments are not patentably distinct (as 
noted in MPEP § 809.02(a)) will not overcome a 
requirement for restriction if the embodiments do not 




 

have overall appearances that are basically the same 
as each other.

When a traversal specifically points out the supposed 
errors in a restriction, examiners must reevaluate 
the requirement in view of these remarks. If the 
restriction requirement is to be maintained, it must be 
repeated and made final in the next Office action and 
the arguments answered. See MPEP § 821.01. No 
application should be allowed on the next Office 
action where a response to a restriction requirement 
includes an election with traverse, unless the traversal 
is withdrawn in view of a telephone interview, or the 
examiner withdraws the restriction requirement.

1504.06Double Patenting [R-5]

There are generally two types of double patenting 
rejections. One is the “same invention” type double 
patenting rejection based on 35 U.S.C. 171 which 
states in the singular that an inventor “may obtain a 
patent.” The second is the “nonstatutory-type” double 
patenting rejection based on a judicially created doctrine 
grounded in public policy and which is primarily 
intended to prevent prolongation of the patent term by 
prohibiting claims in a second patent not patentably 
distinct from claims in a first patent. Nonstatutory 
double patenting includes rejections based on one-
way determination of obviousness, and two-way 
determination of obviousness. 

The charts in MPEP § 804 outline the procedure for 
handling all double patenting rejections.

Double patenting rejections are based on a comparison 
of the claims in a patent and an application or 
between two applications; the disclosure of the patent 
or application may be relied upon only to define the 
claim. 35 U.S.C. 171 specifically states that “a patent” 
may be obtained if certain conditions are met; this use 
of the singular makes it clear that only one patent may 
issue for a design.

Determining if a double patenting rejection is 
appropriate involves answering the following inquiries: 
Is the same design being claimed twice? If the 
answer is yes, then a rejection under 35 U.S.C. 171should be given on the grounds of “same invention” 
type double patenting. If not, are the designs directed 
to patentably indistinct variations of the same inventive 
concept? If the answer is yes, then a rejection 
based on the nonstatutory type double patenting 
should be given.

Double patenting rejections are based on a comparison 
of claims. While there is a direct correlation 
between the drawings in a design application and the 
claim, examiners must be aware that no such correlation 
is necessary in a utility application or patent. Several 
utility patents may issue with the identical 
drawing disclosure but with claims directed to different 
inventions. So any consideration of possible double 
patenting rejections between a utility application 
or patent with a design application cannot be based on 
the utility drawing disclosure alone. Anchor Hocking 
Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 
183 
USPQ 87 (D. Del. 1974). The examiner must be 
able to recreate the design claimed from the utility 
claims without any reliance whatsoever on the drawings.


If a provisional double patenting rejection (of any 
type) is the only rejection remaining in two conflicting 
applications, the examiner should withdraw that 
rejection in one of the applications (e.g., the application 
with the earlier filing date) and permit the application 
to issue as a patent. The examiner should 
maintain the provisional double patenting rejection in 
the other application which rejection will be converted 
into a double patenting rejection when the first 
application issues as a patent. If more than two applications 
conflict with each other and one is allowed, 
the remaining applications should be cross rejected 
against the others as well as the allowed application. 
For this type of rejection to be appropriate, there must 
be either at least one inventor in common, or a common 
assignee. If the claims in copending design applications 
or a design patent and design applications 
have a common assignee but different inventive entities, 
rejections under 35 U.S.C. 102(e), (f) and (g)/
103(a) must be considered in addition to the double 
patenting rejection. See MPEP § 804, § 2136, § 2137and § 2138.

I.“SAME INVENTION” DOUBLE PATENTING 
REJECTIONS

A design - design statutory double patenting rejection 
based on 35 U.S.C. 171 prevents the issuance of 
a second patent for a design already patented. For this 
type of double patenting rejection to be proper, identical 
designs with identical scope must be twice 
claimed. In re Goodman, 11 F.3d 1046, 29 USPQ2d 
2010 (Fed. Cir. 1993). A design - utility “same inven





 

tion” double patenting rejection is based on judicial 
doctrine as there is no statutory basis for this rejection 
because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can 
be applied against both claims. In re Thorington, 418 
F.2d 528, 163 USPQ 644 (CCPA 1969). The “same 
invention” type of double patenting rejection, whether 
statutory or nonstatutory, cannot be overcome by a 
terminal disclaimer. In re Swett, 145 F.2d 631, 
172 
USPQ 72 (CCPA 1971). 

¶ 15.23.02 Summary for “Same Invention” – Type Double 
Patenting Rejections

Applicant is advised that a terminal disclaimer may not be used 
to overcome a “same invention” type double patenting rejection. 
In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); 
MPEP § 804.02.

Examiner Note:

This form paragraph should follow all “same invention” type 
double patenting rejections.

¶ 15.23 35 U.S.C. 171 Double Patenting Rejection 
(Design-Design)

The claim is rejected under 35 U.S.C. 171 on the ground of 
double patenting since it is claiming the same design as that 
claimed in United States Design Patent No. [1].

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” 
type double patenting rejections.

¶ 15.23.01 35 U.S.C. 171 Provisional Double Patenting 
Rejection (Design-Design)

The claim is provisionally rejected under 35 U.S.C. 171 on the 
ground of double patenting since it is claiming the same design as 
that claimed in copending Application No. [1]. This is a provisional 
double patenting rejection since the conflicting claims have 
not in fact been patented.

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” 
type double patenting rejections.

¶ 15.24.07 Double Patenting Rejection (Design-Utility)

The claim is rejected under the judicially created doctrine of 
double patenting as being directed to the same invention as that 
set forth in claim [1] of United States Patent No. [2]. See In re 
Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” 
type double patenting rejections.

¶ 15.24.08 Provisional Double Patenting Rejection 
(Design-Utility)

The claim is provisionally rejected under the judicially created 
doctrine of double patenting as being directed to the same invention 
as that set forth in claim [1] of copending Application No. [2]. 
See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).

This is a provisional double patenting rejection because the 
claims have not in fact been patented.

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” 
type double patenting rejections.

II.NONSTATUTORY DOUBLE PATENTING 
REJECTIONS

A rejection based on nonstatutory double patenting 
is based on a judicially created doctrine grounded in 
public policy so as to prevent the unjustified or 
improper timewise extension of the right to exclude 
granted by a patent. In re Goodman, 11 F.3d 1046, 
29 
USPQ2d 2010 (Fed. Cir. 1993). 

A nonstatutory double patenting rejection of the 
obviousness-type applies to claims directed to the 
same inventive concept with different appearances or 
differing scope which are patentably indistinct from 
each other. Nonstatutory categories of double patenting 
rejections which are not the “same invention” type 
may be overcome by the submission of a terminal disclaimer.


In determining whether an obviousness-type 
double patenting rejection is appropriate, the examiner 
must compare the overall appearance of the 
claimed design in the application with the overall 
appearance of the claimed design in the conflicting 
application or patent. The claim in the patent or conflicting 
application must be considered as a whole, 
i.e., the elements of the claimed design of the reference 
are not considered individually as they may be 
when establishing a prima facie case of obviousness 
under 35 U.S.C. 103(a). After the factual inquiries 
mandated under Graham v. John Deere Co., 383 U.S. 
1, 148 USPQ 459 (1966), have been made, as with a 
rejection under 35 U.S.C. 103(a), the examiner must 
then determine whether the results of the inquiries 
support a conclusion of prima facie obviousness-type 
double patenting. To establish a prima facie case of 
obviousness-type double patenting: (A) the conflicting 
design claims must have overall appearances with 
basically the same design characteristics; and (B) the 
differences between the two designs must be insufficient 
to patentably distinguish one design from the 
other. Differences may be considered patentably 




 

insufficient when they are de minimis or obvious to 
a 
designer of ordinary skill in the art. While the conflicting 
application or patent (if less than a year older 
than the application) used to establish a prima faciecase of obviousness-type double patenting is not considered 
“prior art,” the principle involved is the 
same. In re Zickendraht, 319 F.2d 225, 138 USPQ 22 
(CCPA 1963)(see concurring opinion of Judge Rich). 

 In determining whether to make an obviousness-
type double patenting rejection between designs having 
differing scope, the examiner should compare the 
reference claim with the application claim. A rejection 
is appropriate if:

(A)The difference in scope is minor and patentably 
indistinct between the claims being compared;

(B)Patent protection for the design, fully disclosed 
in and covered by the claim of the reference, 
would be extended by the allowance of the claim in 
the later filed application; and

(C)No terminal disclaimer has been filed. 

This kind of obviousness-type double patenting 
rejection in designs will occur between designs which 
may be characterized as a combination (narrow claim) 
and a subcombination/element thereof (broad claim). 
See discussion in MPEP § 1504.05, subsection II, B. 
If the designs are patentably indistinct and are 
directed to the same inventive concept the examiner 
must determine whether the subject matter of the narrower 
claim is fully disclosed in and covered by the 
broader claim of the reference. If the reference does 
not fully disclose the narrower claim, then a double 
patenting rejection should not be made. The additional 
disclosure necessary to establish that the applicant 
was in possession of the narrower claim at the 
time the broader claim was filed may be in a title or 
descriptive statement as well as in a broken line 
showing in the drawings. If the broader claim of the 
reference does not disclose the additional subject matter 
claimed in the narrower claim, then applicant 
could not have claimed the narrower claim at the time 
the application with the broader claim was filed and a 
rejection under nonstatutory double patenting would 
be inappropriate.

A nonstatutory double patenting rejection may be 
made between a patent and an application or provisionally 
between applications. Such rejection over a 
patent should only be given if the patent issued less 
than a year before the filing date of the application. If 
the patent is more than a year older than the application, 
the patent is considered to be “prior art” which 
may be applied in a rejection under 35 
U.S.C. 102(b)/
103(a). 
The purpose of a terminal disclaimer is to 
obviate a double patenting rejection by removing 
potential harm to the public by issuing a second 
patent. See MPEP § 804.

If the issue of double patenting is raised between a 
patent and a continuing application, examiners are 
reminded that this ground of rejection can only be 
made when the filing of the continuing application is 
voluntary and not the direct, unmodified result of 
restriction requirement under 35 U.S.C. 121. See 
MPEP § 804.01.

Examiners should particularly note that a design-
design nonstatutory double patenting rejection does 
not always have to be made in both of the conflicting 
applications. For the most part, these rejections will 
be made in each of the conflicting applications; but, if 
the rejection is only appropriate in one direction, it is 
proper to reject only one application. The criteria for 
determining whether a one-way obviousness determination 
is necessary or a two-way obviousness determination 
is necessary is set forth in MPEP § 804. 
However, in design-utility situations, a two-way obviousness 
determination is necessary for the rejection to 
be proper. In re Dembiczak, 175 
F.3d 994, 
50 
USPQ2d 1614 (Fed. Cir. 1999).

The following form paragraphs may be used in 
making a double patenting rejection. Explanation 
should be provided in the appropriate brackets.

¶ 15.24.06 Basis for Nonstatutory Double Patenting, 
“Heading Only”

The non-statutory double patenting rejection is based on a judicially 
created doctrine grounded in public policy (a policy 
reflected in the statute) so as to prevent the unjustified or improper 
timewise extension of the “right to exclude” granted by a patent 
and to prevent possible harassment by multiple assignees. See In 
re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In 
re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van 
Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 
422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington,
418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 
1.321(c) may be used to overcome an actual or provisional rejection 
based on a nonstatutory double patenting ground provided the 
conflicting application or patent is shown to be commonly owned 
with this application. See 37 
CFR 1.130(b).




 

Effective January 1, 1994, a registered attorney or agent of 
record may sign a terminal disclaimer. A terminal disclaimer 
signed by the assignee must fully comply with 37 CFR 3.73(b).

Examiner Note:

This form paragraph must precede all nonstatutory double patenting 
rejections as a heading, except “same invention” type.

¶ 15.24 Obviousness-type Double Patenting Rejection 
(Single Reference)

The claim is rejected under the judicially created doctrine of 
the obviousness-type double patenting of the claim in United 
States Patent No. [1]. Although the conflicting claims are not 
identical, they are not patentably distinct from each other because 
[2]. 

Examiner Note:

1.In bracket 1, insert prior U.S. Patent Number.

2.In bracket 2, the differences between the conflicting claims 
must be identified and indicated as being minor and not distinguishing 
the overall appearance of one over the other.

3.This form paragraph must be preceded by form paragraph 
15.24.06 and followed by form paragraph 15.67.

¶ 15.24.03 Provisional Obviousness-Type Double 
Patenting Rejection (Single Reference)

The claim is provisionally rejected under the judicially created 
doctrine of the obviousness-type double patenting of the claim of 
copending Application No. [1]. Although the conflicting claims 
are not identical, they are not patentably distinct from each other 
because [2]. This is a provisional obviousness-type double patenting 
rejection because the conflicting claims have not in fact 
been patented.

Examiner Note:

1.In bracket 1, insert conflicting application number.

2.In bracket 2, the differences between the conflicting claims 
must be identified and indicated as being minor and not distinguishing 
the overall appearance of one over the other.

3.This form paragraph must be preceded by form paragraph 
15.24.06 and followed by form paragraph 15.67.

¶ 15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single 
Reference)

It is well settled that it is unobviousness in the overall appearance 
of the claimed design, when compared with the prior art, 
rather than minute details or small variations in design as appears 
to be the case here, that constitutes the test of design patentability. 
See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In 
re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

¶ 15.25 Obviousness-Type Double Patenting Rejection 
(Multiple References)

The claim is rejected under the judicially created doctrine of 
the obviousness-type double patenting of the claim(s) in United 
States Patent No. [1] in view of [2]. At the time applicant made 
the design, it would have been obvious to a designer of ordinary 
skill in the art to [3] as demonstrated by [4].

Examiner Note:

1.In bracket 1, insert conflicting patent number.

2.In bracket 2, insert secondary reference(s).

3.In bracket 3, insert an explanation of how the conflicting 
claim in the patent is modified.

4. In bracket 4, identify the secondary reference(s) teaching the 
modification(s).

5.This form paragraph must be preceded by form paragraph 
15.24.06 and followed by form paragraph 15.68.

¶ 15.24.04 Provisional Obviousness-Type Double 
Patenting Rejection (Multiple References)

The claim is provisionally rejected under the judicially created 
doctrine of the obviousness-type double patenting of the claim of 
copending Application No. [1] in view of [2]. At the time applicant 
made the design, it would have been obvious to a designer of 
ordinary skill in the art to [3] as demonstrated by [4]. This is a 
provisional obviousness-type double patenting rejection because 
the conflicting claims have not in fact been patented.

Examiner Note:

1.In bracket 1, insert conflicting application number.

2.In bracket 2, insert secondary reference(s).

3.In bracket 3, insert an explanation of how the conflicting 
claim in the copending application is modified.

4.In bracket 4, identify the secondary reference(s) teaching the 
modification(s).

5.This form paragraph must be preceded by form paragraph 
15.24.06 and followed by form paragraph 15.68.

¶ 15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple 
References)

This modification of the basic reference in light of the secondary 
prior art is proper because the applied references are so related 
that the appearance of features shown in one would suggest the 
application of those features to the other. See In re Rosen, 673 
F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 
1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 
447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law 
has held that a designer skilled in the art is charged with knowledge 
of the related art; therefore, the combination of old elements, 
herein, would have been well within the level of ordinary skill. 
See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and 
In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

1504.10Priority Under 35 U.S.C. 
119(a)-(d) [R-5]

35 U.S.C. 172. Right of priority.

The right of priority provided for by subsections (a) through 
(d) of section 119 of this title and the time specified in section 
102(d) shall be six months in the case of designs. The right of priority 
provided for by section 119(e) of this title shall not apply to 
designs.

The provisions of 35 U.S.C. 119(a)-(d) apply to 
design patent applications. However, in order to 




 

obtain the benefit of an earlier foreign filing date, the 
United States application must be filed within 
6 
months of the earliest date on which any foreign 
application for the same design was filed. Design 
applications may not make a claim for priority of a 
provisional application under 35 U.S.C. 119(e).

¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d)

Applicant is advised of conditions as specified in 35 U.S.C. 
119(a)-(d). An application for a design patent for an invention 
filed in this country by any person who has, or whose legal representatives 
have previously filed an application for a design patent, 
or equivalent protection for the same design in a foreign country 
which offers similar privileges in the case of applications filed in 
the United States or in a WTO member country, or to citizens of 
the United States, shall have the same effect as the same application 
would have if filed in this country on the date on which the 
application for patent for the same invention was first filed in such 
foreign country, if the application in this country is filed within six 
(6) months from the earliest date on which such foreign application 
was filed.

¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met

The claim for priority under 35 U.S.C. 119(a)-(d) to the [1] 
application is acknowledged, however, the claim for priority cannot 
be based on such application since it was filed more than six 
(6) months before the filing of the application in the United States. 
35 U.S.C 172.

Examiner Note:

1. In bracket, insert the name of the foreign country.

¶ 15.03 Untimely Priority Papers

Receipt is acknowledged of the filing on [1] of a certified copy 
of the [2] application referred to in the oath or declaration. A 
claim for priority cannot be based on said application, since the 
United States application was filed more than six (6) months 
thereafter (35 U.S.C. 172). 

The United States will recognize claims for the 
right of priority under 35 U.S.C. 119(a)-(d) based on 
applications filed under such bilateral or multilateral 
treaties as the “Hague Agreement Concerning the 
International Deposit of Industrial Designs,” “Uniform 
Benelux Act on Designs and Models” and 
“European Community Design.” In filing a claim for 
priority of a foreign application previously filed under 
such a treaty, certain information must be supplied to 
the United States Patent and Trademark Office. In 
addition to the application number and the date of filing 
of the foreign application, the following information 
is required: 

(A)the name of the treaty under which the application 
was filed, 

(B)the name of at least one country other than the 
United States in which the application has the effect 
of, or is equivalent to, a regular national filing and

(C)the name and location of the national or inter-
governmental authority which received the application.


¶ 15.02 Right of Priority Under 35 U.S.C. 119(b)

No application for design patent shall be entitled to the right of 
priority under 35 U.S.C. 119(b) unless a claim therefor and a certified 
copy of the original foreign application, specification and 
drawings upon which it is based are filed in the United States 
Patent and Trademark Office before the issue fee is paid, or at 
such time during the pendency of the application as required by 
the Director not earlier than six (6) months after the filing of the 
application in this country. Such certification shall be made by the 
Patent Office, or other proper authority of the foreign country in 
which filed, and show the date of the application and of the filing 
of the specification and other papers. The Director may require a 
translation of the papers filed if not in the English language, and 
such other information as deemed necessary.

The notation requirement on design patent application 
file wrappers when foreign priority is claimed is 
set forth in MPEP § 202.03.

¶ 15.04 Priority Under Bilateral or Multilateral Treaties

The United States will recognize claims for the right of priority 
under 35 U.S.C. 119(a)-(d) based on applications filed under such 
bilateral or multilateral treaties as the Hague Agreement Concerning 
the International Deposit of Industrial Designs, the Benelux 
Designs Convention and European Community Design. In filing 
a claim for priority of a foreign application previously filed under 
such a treaty, certain information must be supplied to the United 
States Patent and Trademark Office. In addition to the application 
number and the date of filing of the application, the following 
information is requested: (1) the name of the treaty under which 
the application was filed; (2) the name of at least one country 
other than the United States in which the application has the effect 
of, or is equivalent to, a regular national filing; and (3) the name 
and location of the national or international governmental authority 
which received such application.



Attention is also directed to the paragraphs dealing 
with the requirements where an actual model was 
originally filed in Germany (MPEP § 201.14(b)).

See MPEP Chapter 200 and 37 CFR 1.55 for further 
discussion of the practice and procedure under 
35 
U.S.C. 119(a)-(d).




 

1504.20Benefit Under 35 U.S.C. 120 
[R-5] [R-5]

35 U.S.C. 120. Benefit of earlier filing date in the United 
States.

An application for patent for an invention disclosed in the manner 
provided by the first paragraph of section 112 of this title in an 
application previously filed in the United States, or as provided by 
section 363 of this title, which is filed by an inventor or inventors 
named in the previously filed application shall have the same 
effect, as to such invention, as though filed on the date of the prior 
application, if filed before the patenting or abandonment of or termination 
of proceedings on the first application or on an application 
similarly entitled to the benefit of the filing date of the first 
application and if it contains or is amended to contain a specific 
reference to the earlier filed application. No application shall be 
entitled to the benefit of an earlier filed application under this section 
unless an amendment containing the specific reference to the 
earlier filed application is submitted at such time during the pendency 
of the application as required by the Director. The Director 
may consider the failure to submit such an amendment within that 
time period as a waiver of any benefit under this section. The 
Director may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed submission of an 
amendment under this section.

If applicant is entitled under 35 U.S.C. 120 to the 
benefit of an earlier U.S. filing date, the statement 
that, “This is a division [continuation] of design 
Application No.— — — —, filed — — —.” should 
appear in the first sentence of the specification. As set 
forth in 37 CFR 1.78(a)(2), the specification must 
contain or be amended to contain such a reference in 
the first sentence(s) following the title unless the 
reference is included in an application data sheet (37 
CFR 1.76). The failure to timely submit such a reference 
is considered a waiver of any benefit under 35 
U.S.C. 120.

Form paragraph 15.26 may be used to remind 
applicant that a reference to the prior application must 
be included in the first sentence(s) of the specification 
or in an application data sheet.



¶ 15.26 Identification of Prior Application(s) in 
Nonprovisional Applications - Benefit Claimed

Applicant is reminded of the following requirement:

In a continuation or divisional application (other than a 
continued prosecution application filed under 37 CFR 
1.53(d)), the first sentence(s) of the specification or the 
application data sheet (37 CFR 1.76) should include a reference 
to the prior application(s) from which benefit is 
sought. See 
37 
CFR 1.78. The following format is suggested: 
“This is a continuation (or division) of Application 
No.________, filed ________, now (abandoned, pending or 
U.S. Patent No.________).”



Attention is directed to the requirements for “continuing” 
applications set forth in MPEP § 201.07, 
§
 
201.08, and § 201.11. Applicants are entitled to 
claim the benefit of the filing date of earlier applications 
for later claimed inventions under 35 U.S.C. 120only when the earlier application discloses that invention 
in the manner required by 35 U.S.C. 112, first 
paragraph. In all continuation and divisional applications, 
a determination must be made by the examiner 
as to whether the conditions for priority under 
35 
U.S.C. 120 have been met. The claimed design 
in a continuation application and in a divisional application 
must be disclosed in the original 
application.
 
If this condition is not met, the application 
is not entitled to the benefit of the earlier filing 
date and the examiner should notify applicant accordingly 
by specifying the reasons why applicant is not 
entitled to claim the benefit under 35 U.S.C. 120. 
Form paragraphs 2.09 and 2.10 may be used followed 
by a specific explanation as to why the later filed 
application fails to comply with the requirements of 
35 U.S.C 120. The examiner should also require 
applicant to cancel the claim for benefit in the 
first sentence(s) of the specification or submit a 
supplemental application data sheet, where appropriate. 


For applications filed prior to September 21, 
2004, in the absence of a statement in the application 
as originally filed incorporating by reference the disclosure 
of an earlier filed application, the disclosure in 
a continuing application may not be amended to conform 
to that of the earlier filed application for which 
priority is claimed. A mere statement that an application 
is a continuation or division of an earlier filed 
application is not an incorporation of anything into 
the application containing such reference for purposes 
of satisfying the disclosure requirements of 35 U.S.C. 
112, first paragraph. In re de Seversky, 474 F.2d 671, 
177 USPQ 144 (CCPA 1973). See also MPEP 
608.01(p). For applications filed on or after September 
21, 2004, 37 CFR 1.57(a) provides that a claim 
under 37 CFR 1.78 for the benefit of a prior-filed 
application, that was present on the filing date of 




 

the 
application, is considered an incorporation by reference 
as to inadvertently omitted material. See 
MPEP § 201.17.

When the first application is found to be fatally 
defective under 35 
U.S.C. 112 because of insufficient 
disclosure to support an allowable claim and such 
position has been made of record by the examiner, a 
second design patent application filed as an alleged 
“continuation-in-part” of the first application to supply 
the deficiency is not entitled to the benefit of the 
earlier filing date. See Hunt Co. v. Mallinckrodt 
Chemical Works, 177 F.2d 583, 83 USPQ 277 (F2d 
Cir. 1949) and cases cited therein. Also, a design 
application filed as a “continuation-in-part” that 
changes the shape or configuration of a design disclosed 
in an earlier application is not entitled to the 
benefit of the filing date of the earlier application. See 
In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. 
Cir. 1983). However, a later filed application that 
changes the scope of a design claimed in an earlier 
filed application by reducing certain portions of the 
drawing to broken lines is not a change in configuration 
as defined by the court in Salmon. See MPEP 
§
 
1504.04, subsection II.

Unless the filing date of an earlier application is 
actually needed, for example, in the case of an interference 
or to avoid an intervening reference, there is 
no need for the examiner to make a determination in a 
continuation-in-part application as to whether the 
requirement of 35 U.S.C. 120 is met. Note the holdings 
in In re Corba, 212 USPQ 825 (Comm’r Pat. 
1981).

Form paragraph 15.74 may be used in a first Office 
action on the merits in any application identified as a 
continuation-in-part which claims benefit under 
35 U.S.C. 120 to a prior application.



¶ 15.74 Continuation-In-Part

Reference to this design application as a continuation-in-part 
under 35 U.S.C. 120 is acknowledged. Applicant is advised that 
the design disclosed in the parent application is not the same 
design as the design disclosed in this application. Therefore, this 
application does not satisfy the written description requirement of 
35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not 
entitled to benefit of the earlier filing date. However, unless the 
filing date of the earlier application is actually needed, such as to 
avoid intervening prior art, the entitlement to priority in this CIP 
application will not be considered. See In re Corba, 212 USPQ 
825 (Comm’r Pat. 1981).

Examiner Note:

This form paragraph should be used to notify applicant that the 
C-I-P application is not entitled to the benefit of the parent application 
under 35 U.S.C. 120.



Where a continuation-in-part application claims 
benefit under 35 U.S.C. 120 of the filing date of an 
earlier application, which in turn claims the priority 
under 35 U.S.C. 119(a)-(d) of a foreign application, 
and the conditions of 35 U.S.C. 120 are not met, 
a determination as to whether the foreign application 
for patent/registration has matured into a form of 
patent protection must be made. To determine the 
status of the foreign application, the charts in MPEP 
§
 
1504.02 should be used.  If the foreign application 
for patent/registration has matured into a form of 
patent protection and would anticipate or render the 
claim in the alleged CIP application obvious, the 
design shown in the foreign application papers would 
qualify as prior art under 35 U.S.C. 102(d)/172 and 
the claim should be rejected under 35 
U.S.C. 102/103. 
The claim for the benefit of the earlier filing date 
under 35 U.S.C. 120 as a continuation-in-part should 
be denied and the claim for priority under 35 U.S.C. 
119(a)-(d) should also be denied. Form paragraph 
15.75 may be used.



¶ 15.75 Preface to Rejection in Alleged CIP Based on 35 
U.S.C. 102(d)/172 

Reference to this design application as a continuation-in-part 
under 35 
U.S.C. 120 is acknowledged. Applicant is advised that 
the design disclosed in the parent application is not the same 
design as the design disclosed in this application. Therefore, this 
application does not satisfy the written description requirement of 
35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not 
entitled to benefit of the earlier filing date.

The parent application claimed foreign priority under 35 
U.S.C. 119(a) - (d). Insofar as the foreign application has matured 
into a patent/registration more than six months before the filing 
date of the present application, it qualifies as prior art under 35 
U.S.C. 102(d)/172.

Examiner Note:

This form paragraph should be followed with a rejection under 
35 U.S.C. 102 or 103(a) depending on the difference(s) between 
this claim and the design shown in the priority papers. 



If the status of the foreign application cannot be 
determined the following form paragraph should be 
used instead.




 



¶ 15.75.01 C-I-P Caution, Claim to Foreign Priority in 
Earlier Filed Application 

Reference to this application as a continuation-in-part under 35 
U.S.C. 120 is acknowledged. Applicant is advised that the design 
disclosed in the parent application is not the same design as the 
design disclosed in this applicatoin. Therefore, this application 
does not satisfy the written description requirement of 35 U.S.C. 
112, first paragraph, under 35 U.S.C. 120 and is not entitled to 
benefit of the earlier filing date.

However, unless the filing date of the earlier application is 
actually needed, such as to avoid intervening prior art, entitlement 
to priority in this CIP application will not be considered. See In re 
Corba, 212 USPQ 825 (Comm’r Pat. 1981).

The parent application claimed foreign priority under 35 
U.S.C. 119(a) - (d). Applicant is reminded that if the foreign application 
to which priority was claimed matured into a form of patent 
protection prior to the filing of this application it qualifies as prior 
art under 35 U.S.C. 102(d)/172.



Where the conditions of 35 U.S.C. 120 are met, a 
design application may be considered a continuing 
application of an earlier utility application. Conversely, 
this also applies to a utility application relying 
on the benefit of the filing date of an earlier filed 
design application. See In re Chu, 66 F.3d 292, 
36 
USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 
705 
F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In 
addition, a design application may claim benefit from 
an earlier filed PCT application under 35 U.S.C. 120if the U.S. was designated in the PCT application.

Note also In re Berkman, 642 F.2d 427, 209 USPQ 
45 (CCPA 1981) where the benefit of a design patent 
application filing date requested under 35 U.S.C. 120was denied in the later filed utility application of the 
same inventor. The Court of Customs and Patent 
Appeals took the position that the design application 
did not satisfy 35 U.S.C. 112, first paragraph, as 
required under 35 U.S.C. 120.

1504.30Expedited Examination [R-5]

37 CFR 1.155. Expedited examination of design 
applications

(a)The applicant may request that the Office expedite the 
examination of a design application. To qualify for expedited 
examination.

(1)The application must include drawings in compliance 
with § 1.84;

(2)The applicant must have conducted a preexamination 
search; and

(3)The applicant must file a request for expedited examination 
including:

(i)The fee set forth in § 1.17(k); and

(ii)A statement that a preexamination search was conducted. 
The statement must also indicate the field of search and 
include an information disclosure statement in compliance with 
§
 
 
1.98.

(b)The Office will not examine an application that is not in 
condition for examination (e.g, missing basic filing fee) even if 
the applicant files a request for expedited examination under this 
section.

37 CFR 1.155 establishes an expedited procedure 
for design applications. This expedited procedure 
became effective on September 8, 2000 and is available 
to all design applicants who first conduct a preliminary 
examination search and file a request for 
expedited treatment accompanied by the fee specified 
in 37 CFR 1.17(k). This expedited treatment is 
intended to fulfill a particular need by affording rapid 
design patent protection that may be especially important 
where marketplace conditions are such that new 
designs on articles are typically in vogue for limited 
periods of time.

A design application may qualify for expedited 
examination provided the following requirements are 
met: 

(A)A request for expedited examination is filed 
(Form PTO/SB/27 may be used); 

(B)The design application is complete and it 
includes drawings in compliance with 37 CFR 1.84(see 37 CFR 1.154 and MPEP § 1503 concerning the 
requirements for a complete design application); 

(C)A statement is filed indicating that a preexamination 
search was conducted (a search made by a foreign 
patent office satisfies this requirement). The 
statement must also include a list of the field of search 
such as by U.S. Class and Subclass (including domestic 
patent documents, foreign patent documents and 
nonpatent literature); 

(D)An information disclosure statement in compliance 
with 37 CFR 1.98 is filed; 

(E)The basic design application filing fee set 
forth in 37 CFR 1.16(b) is paid; and 

(F)The fee for expedited examination set forth in 
37 CFR 1.17(k) is paid. 




 

EXPEDITED EXAMINATION PROCEDURE

Design applications requesting expedited examination 
and complying with the requirements of 37 CFR 
1.155 are examined with priority and undergo expedited 
processing throughout the entire course of prosecution 
in the Office, including appeal, if any, to the 
Board of Patent Appeals and Interferences. All processing 
is expedited from the date the request is 
granted.

Design applicants seeking expedited examination 
may file a design application in the Office together 
with a corresponding request under 37 CFR 1.155 by 
hand-delivering the application papers and the request 
to the Customer Service Window located at the 
Randolph Building, 401 Dulany Street, Alexandria, 
VA 22314. For applicants who choose to file a 
design application and the corresponding request 
under 37 CFR 1.155 by mail, the envelope should be 
addressed to:

Mail Stop Expedited Design

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

Mail Stop Expedited Design should only be used 
for the initial filing of design applications accompanied 
by a corresponding request for expedited examination 
under 37 CFR 1.155. Mail Stop Expedited 
Design should NOT be used for a request under 37 
CFR 1.155 filed subsequent to the filing of the corresponding 
design application. Instead, a subsequently 
filed request under 37 CFR 1.155 should be made by 
facsimile transmission to the centralized facsimile 
number 571-273-8300 with the notation “SPECIAL 
PROCEDURES SUBMISSION” included at 
the top of the first page and the corresponding application 
number identified.

 Design application filings addressed to Mail Stop 
Expedited Design will be forwarded immediately to 
the Design TC Director’s office. Whether an application 
requesting expedited examination is hand-delivered 
to the Customer Service Window or mailed 
to Mail Stop Expedited Design, expedited processing 
is initiated at the Design TC Director’s office provided 
the application (including the design application 
filing fee) is in condition for examination and a complete 
request under 37 CFR 1.155 (including the fee 
specified at 37 CFR 1.17(k)) qualifies the application 
for expedited examination. 

 Upon a decision by the Design TC Director to 
grant the request for expedited examination, the fees 
are immediately processed, the application papers are 
promptly assigned an application number, and the 
application is dispatched to an examiner for expedited 
examination. In addition, the applicant is notified that 
examination is being expedited. The expedited treatment 
under 37 CFR 1.155 occurs through initial 
examination processing and throughout the entire 
prosecution in the Office. Whereas, an application 
granted special status pursuant to a successful “petition 
to make special” under MPEP §
 
708.02 is prioritized 
while it is on the examiner’s docket so that the 
application will be examined out of turn responsive to 
each successive communication from the applicant 
requiring Office action. For a patentable design application, 
the expedited treatment under 37 CFR 1.155would be a streamlined filing-to-issuance procedure. 
This procedure further expedites design application 
processing by decreasing clerical processing time as 
well as the time spent routing the application between 
processing steps. 

 Although a request under 37 CFR 1.155 may be 
filed subsequent to the filing of the design application, 
it is recommended that the request and the corresponding 
design application be filed together in order 
to optimize expeditious processing. 

 If an application requesting expedited examination 
is incomplete (not in condition for examination), an 
appropriate notice will be mailed to the applicant 
identifying the reasons why the application is incomplete 
and requiring correction thereof. The Office will 
not examine an application that is not in condition for 
examination even if the applicant files a request for 
expedited examination. 

 If an application requesting expedited examination 
fails to comply with one or more of the requirements 
for expedited examination under 37 CFR 1.155, but 
the application is otherwise complete, the applicant 
will be promptly notified and required to comply with 
all requirements under 37 CFR 1.155 within a shortened 
time period extendable under 37 CFR 1.136(a). 
Unless all requirements under 37 CFR 1.155 are 
timely met, the application will await action in its regular 
turn.




 

 Once a request under 37 CFR 1.155 is granted, 
examiners will expedite examination by examining 
the application out-of-turn. Examiners are strongly 
encouraged to use telephone interviews to resolve 
minor problems. Clerical processing of the application 
will be expedited as well.

 If the overall appearance of two or more patentably 
distinct embodiments of an article as disclosed in 
the 
drawings are different in appearance or scope, 
restriction will be required in accordance with 
MPEP 
§
 
1504.05. If applicant refuses to make an 
election without traverse, the application will not 
be 
further examined at that time, and the application 
will 
await 
action in its regular turn. Divisional applications 
directed to nonelected inventions will not 
qualify for expedited examination unless the divisional 
application meets on its own all requirements 
for expedited examination under 37 CFR 1.155. Similarly, 
expedited status will not carry over to a continuing 
application, including a CPA, unless the 
continuing application meets on its own all requirements 
for expedited examination under 37 CFR 
1.155. 

Once a request for expedited examination is 
granted, prosecution will proceed according to the 
procedure under 37 CFR 1.155. There is no provision 
for “withdrawal” from expedited examination procedure. 


1505Allowance and Term of Design 
Patent

35 U.S.C. 173. Term of design patent.

Patents for designs shall be granted for the term of fourteen 
years from the date of grant.

1509Reissue of a Design Patent [R-5]

See MPEP Chapter 1400 for practice and procedure 
in reissue applications. See also MPEP § 1457 regarding 
design reissue applications.

For design reissue application fee, see 37 CFR 
1.16(e). For fee for issuing a reissue design 
patent, see 37 CFR 1.18(b).

The term of a design patent may not be extended by 
reissue. Ex parte Lawrence, 70 USPQ 326 (Comm’r 
Pat. 1946). If a reissue application is filed for the purpose 
of correcting the drawing of a design patent, 
either by canceling views, amending views or adding 
new views, the provisions of 37 CFR 1.173(b)(3) 
must be followed. All changes to the patent drawing 
shall be explained, in detail, beginning on a separate 
sheet accompanying the papers including the amendment 
to the drawing. A marked-up copy of any 
amended drawing figure, including annotations indicating 
the changes made, should be submitted. The 
marked-up copy must be clearly labeled as “Annotated 
Marked-up Drawings” and it must be presented 
in the amendment or remarks section that explains the 
change to the drawing.

A reissue application must be filed with a copy of 
all drawing views of the design patent regardless of 
whether certain views are being cancelled or amended 
in the reissue application. Inasmuch as the drawing is 
the primary means for showing the design being 
claimed, it is important for purposes of comparison 
that the reissue of the design patent shows a changed 
drawing view in both its canceled and amended versions 
and/or show a previously printed drawing view 
that has been canceled but not replaced. In addition to 
drawing views that are unchanged from the original 
design patent, the drawing in the reissue application 
may include the following views, all of which will be 
printed as part of the design reissue patent:

(1) CANCELED drawing view. Such a drawing 
view must be surrounded by brackets and must be 
labeled as “Canceled.” For example, FIG. 3 (Canceled). 
If a drawing view is canceled but not replaced 
the corresponding figure description in the reissue 
specification must also be cancelled. However, if a 
drawing view is cancelled and replaced by an 
amended drawing view the corresponding figure 
description in the reissue specification may or may 
not need to be amended.

(2) AMENDED drawing view. Such a drawing 
view must be labeled as “Amended.” For example, 
FIG. 3 (Amended). When an amended drawing view 
is present, there may or may not be a corresponding 
canceled drawing view. If there is such a corresponding 
canceled drawing view, the amended and canceled 
drawing views should have the same figure number. 
The specification of the reissue application need not 
indicate that there is both a canceled version and an 
amended version of the drawing view.

(3) NEW drawing view. Such a drawing view must 
be labeled as “New” For example, FIG. 5 (New). The 
new drawing view should have a new figure number, 
that is, a figure number that did not appear in the orig





 

inal design patent. The specification of the reissue 
application must include a figure description of the 
new drawing view.

If a drawing view includes both a cancelled and 
amended version, and the change in the amended version 
is for the purpose of converting certain solid lines 
to broken lines, the reissue specification must include 
a statement indicating the purpose of the broken lines.

1510Reexamination

See MPEP Chapter 2200 for practice and procedure 
for reexamination applications. 

1511Protest

See MPEP Chapter 1900 for practice and procedure 
in protest.

1512Relationship Between Design 
Patent, Copyright, and Trademark[R-2]

I.DESIGN PATENT/COPYRIGHT OVERLAP


There is an area of overlap between copyright and 
design patent statutes where the author/inventor can 
secure both a copyright and a design patent. Thus an 
ornamental design may be copyrighted as a work of 
art and may also be subject matter of a design patent. 
The author/inventor may not be required to elect 
between securing a copyright or a design patent. See 
In re Yardley, 493 F.2d 1389, 181 USPQ 331. In 
Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), 
the Supreme Court noted the election of protection 
doctrine but did not express any view on it since a 
design patent had been secured in the case and the 
issue was not before the Court.

See form paragraph 15.55 which repeats this information.


II.INCLUSION OF COPYRIGHT NOTICE

It is the policy of the U.S. Patent and Trademark 
Office to permit the inclusion of a copyright notice in 
a design patent application, and thereby any patent 
issuing therefrom, under the following conditions.

(A)A copyright notice must be placed adjacent to 
the copyright material and, therefore, may appear at 
any appropriate portion of the patent application disclosure 
including the drawing. However, if appearing 
on the drawing, the notice must be limited in print size 
from 1/8 inch to 1/4 inch and must be placed within 
the “sight” of the drawing immediately below the figure 
representing the copyright material. If placed on a 
drawing in conformance with these provisions, the 
notice will not be objected to as extraneous matter 
under 37 CFR 1.84.

(B)The content of the copyright notice must be 
limited to only those elements required by law. For 
example, “© 1983 John Doe” would be legally sufficient 
under 17 
U.S.C. 401 and properly limited.

(C)Inclusion of a copyright notice will be permitted 
only if the following waiver is included at the 
beginning (preferably as the first paragraph) of the 
specification to be printed for the patent:

A portion of the disclosure of this patent document contains 
material to which a claim for copyright is made. The 
copyright owner has no objection to the facsimile reproduction 
by anyone of the patent document or the patent 
disclosure, as it appears in the Patent and Trademark 
Office patent file or records, but reserves all other copyright 
rights whatsoever.

(D)Inclusion of a copyright notice after a Notice 
of Allowance has been mailed will be permitted only 
if the criteria of 37 CFR 1.312 have been satisfied.

Any departure from these conditions may result in a 
refusal to permit the desired inclusion. If the waiver 
required under condition (C) above does not include 
the specific language “(t)he copyright owner has no 
objection to the facsimile reproduction by anyone of 
the patent document or the patent disclosure, as it 
appears in the U.S. Patent and Trademark Office 
patent file or records....”, the copyright notice will be 
objected to as improper.

See form paragraph 15.55 which repeats this information.




¶ 15.55 Design Patent-Copyright Overlap

There is an area of overlap between Copyright and Design 
Patent Statutes where an author/inventor can secure both a Copyright 
and a Design Patent. Thus, an ornamental design may be 
copyrighted as a work of art and may also be the subject matter of 
a Design Patent. The author/inventor may not be required to elect 
between securing a copyright or a design patent. See In re Yardley, 
181 USPQ 331 (CCPA 
1974). In Mazer v. Stein, 100 USPQ 325 
(U.S.
 
1954), the Supreme Court noted the election of protection 
doctrine but did not express any view on it since a Design Patent 




 

had been secured in the case and the issue was not before the 
Court.

It is the policy of the Patent and Trademark Office to permit the 
inclusion of a copyright notice in a Design Patent application, and 
thereby any patent issuing therefrom, under the following conditions:


(1)A copyright notice must be placed adjacent to the copyright 
material and, therefore, may appear at any appropriate portion 
of the patent application disclosure including the drawing. 
However, if appearing on the drawing, the notice must be limited 
in print size from 1/8 inch to 1/4 inch and must be placed within 
the “sight” of the drawing immediately below the figure representing 
the copyright material. If placed on a drawing in conformance 
with these provisions, the notice will not be objected to as 
extraneous matter under 37 CFR 
1.84.

(2)The content of the copyright notice must be limited to 
only those elements required by law. For example, “© 1983 John 
Doe” would be legally sufficient under 17 U.S.C.
 
401 and properly 
limited.

(3)Inclusion of a copyright notice will be permitted only if 
the following waiver is included at the beginning (preferably as 
the first paragraph) of the specification to be printed for the 
patent:

A portion of the disclosure of this patent document contains 
material to which a claim for copyright is made. The copyright 
owner has no objection to the facsimile reproduction 
by anyone of the patent document or the patent disclosure, 
as it appears in the Patent and Trademark Office patent file 
or records, but reserves all other copyrights whatsoever.

(4)Inclusion of a copyright notice after a Notice of Allowance 
has been mailed will be permitted only if the criteria of 37 
CFR 
1.312 have been satisfied.

Any departure from these conditions may result in a refusal to 
permit the desired inclusion. If the waiver required under condition 
(3) above does not include the specific language “(t)he copyright 
owner has no objection to the facsimile reproduction by 
anyone of the patent document or the patent disclosure, as it 
appears in the Patent and Trademark Office patent file or 
records...,” the copyright notice will be objected to as improper.



The files of design patents D-243,821, D-243,824, 
and D-243,920 show examples of an earlier similar 
procedure.

III.DESIGN PATENT/TRADEMARK OVERLAP


A design patent and a trademark may be obtained 
on the same subject matter. The CCPA, in In re Mogen 
David Wine Corp., 328 F.2d 925, 140 USPQ 575 
(CCPA 1964), later reaffirmed by the same court at 
372 F.2d 539, 152 USPQ 593 (CCPA 1967), held 
that the underlying purpose and essence of patent 
rights are separate and distinct from those pertaining 
to trademarks, and that no right accruing from one is 
dependent or conditioned by the right concomitant to 
the other.

See form paragraph 15.55.01 which repeats this 
information.



¶ 15.55.01 Design Patent - Trademark Overlap

A design patent and a trademark may be obtained on the same 
subject matter. The Court of Customs and Patent Appeals, in In re 
Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 
1964), later reaffirmed by the same court at 372 F.2d 539, 152 
USPQ 593 (CCPA 1967), has held that the underlying purpose 
and essence of patent rights are separate and distinct from those 
pertaining to trademarks, and that no right accruing from the one 
is dependent upon or conditioned by any right concomitant to the 
other.



IV.INCLUSION OF TRADEMARKS IN DE- 
SIGN PATENT APPLICATIONS

A.Specification

The use of trademarks in design patent application 
specifications is permitted under limited circumstances. 
See MPEP § 608.01(v). This section assumes 
that the proposed use of a trademark is a legal use 
under Federal trademark law.

B.Title

It is improper to use a trademark alone or coupled 
with the word “type” (e.g., Band-Aid type Bandage) 
in the title of a design. Examiners must object to the 
use of a trademark in the title of a design application 
and require its deletion therefrom.

C.Drawings

When a trademark is used in the drawing disclosure 
of a design application, the specification must include 
a statement preceding the claim identifying the trademark 
material forming part of the claimed design and 
the name of the owner of the registered trademark. 
Form paragraph 15.76 may be used.

¶ 15.76 Trademark in Drawing

The [1] forming part of the claimed design is a registered trademark 
of [2]. The specification must be amended to include a 
statement preceding the claim identifying the trademark material 
forming part of the claimed design and the name of the owner of 
the trademark.




 

Examiner Note:

1.In bracket 1, identify the trademark material.

2.In bracket 2, identify the trademark owner.

Any derogatory use of a trademark in a design 
application is prohibited and will result in a rejection 
of the claim under 35 U.S.C. 171 as being offensive 
and, therefore, improper subject matter for design 
patent protection. Cf. Dallas Cowboys Cheerleaders, 
Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 
203 
USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v. 
Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 
(E.D.N.Y. 1972).

1513Miscellaneous

With respect to copies of references being supplied 
to applicant in a design patent application, see MPEP 
§
 
707.05(a).

Effective May 8, 1985, the Statutory Invention 
Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293- 1.297 replaced the former Defensive Publication 
Program. The Statutory Invention Registration (SIR) 
Program applies to utility, plant, and design applications. 
See MPEP Chapter 1100.