Sometimes Less is More: Patentability of “Simple” Designs

When there are fewer design elements in a design claim or when the individual elements of the design seem commonplace in isolation, it can be easy to overlook the inventive effort that went into developing a design. Rather than looking to the overall visual impression that those design elements provide as a whole, one can make the fatal error of ignoring a majority or the entirety of the design, considering it to be no more than an “abstract idea.” 

This is the exact situation that the U.S. Patent and Trademark Office (the Office) found itself in when rejecting a patent application that eventually matured into U.S. Patent No. D953,510 (the ‘510 Patent). The claim of the ‘510 Patent is directed to a ring-shaped portion of a fragrance dispenser. The design takes cues from modern minimalism, with clean, sleek lines that contribute to the overall aesthetic appearance of the dispenser. This design language is quite different from the more ornate designs that are more commonly attributed with design protection, for example, rugs, furniture, silverware, etc. See e.g., Dennis Crouch, Most Common Design Patents 1842-2021, Patentlyo (Sept. 19, 2021). It may even seem like design protection would not be available for something with a design as simple as that of the ring of the ‘510 Patent. Yet, designs such as this take no less inventive effort—significant investments in time and painstaking attention to details are made to get each angle, each curve, and each edge just right—and are no less worthy of protection.

The ’510 Patent was initially rejected as being obvious over U.S. Patent No. D700,692 (the ‘692 Patent), which is directed to a perfume vaporizer that similarly includes a ring-shaped portion. Despite initially recognizing various differences between the designs—their (1) basic proportions, (2) flattened outer profile, and (3) use of transparent material—the Office maintained the ‘692 Patent as the primary reference,[1] alleging that the design characteristics of the ‘692 Patent’s ring portion are basically the same as and therefore analogous to the claimed design. All of the differences in the ‘692 Patent were subsequently deemed de minimis and unrelated to the overall aesthetic appearance of the claim of the ‘510 Patent so that the only remaining similarity is that both designs disclose the general concept of a ring portion.

Clearly, this cannot be the case because the design is a complete physical thing that exists and is more than some abstract idea of a ring portion. Moreover, such high-level “conceptual” similarities are insufficient to support a finding of obviousness. See, e.g., Apple Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1331-1332 (Fed. Cir. 2012) (“Rather than looking to the ‘general concept’ of a tablet, the district court should have focused on the distinctive ‘visual appearances’ of the reference and the claimed design.”). Such high-level abstraction necessarily deconstructs the claim into individual elements that are subsequently analyzed in isolation and deemed de minimis. This analysis therefore violates the requirement that:

[a] design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence -- not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.

In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir. 1993) (emphasis original) (quoting In re Jennings, 182 F.2d 207, 208 (CCPA 1950)

It is impermissible and the design in question will be found non-obvious if a rejection requires modification of every individual feature. Just as the Office cannot start with a disparate prior art reference and then add or change all of the design elements of that reference to build something that looks like the claimed design, the Office also cannot take the opposite approach and vitiate each feature of the claim to make the claimed design look like the prior art. By doing this for each ornamental feature of the claimed design, the Office allows itself to ignore any visual contribution that those elements make to the overall design. When those ignored ornamental features relate to nearly every observable aspect of the design, there is nothing left to weigh and it becomes impossible to consider the design as a whole.

While the ordinary observer test for determining obviousness may “necessarily consider[] how the ornamental differences in each element would impact the ordinary observer’s perception of the overall designs,” and even if those differences, taken in isolation, are inconsequential to the overall design, the correct balance should “consider[] the ornamental aspects of the design while remaining focused on how an ordinary observer would view the overall design.” Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1344 (Fed. Cir. 2020). Under the proper analysis, “the attention of the ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art, . . . which would cause the distinctions between the patented and accused designs [to be] readily apparent.” Id., at 1343-44 (internal quotes removed). “And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008). Thus, “the differences between the patented and the accused design take on greater significance.” Lanard Toys, 958 F.3d at 1344.

In conclusion, while more complex or intricate designs might sail through the U.S. Patent and Trademark Office, it is important to remember that protection can still be had for designs with a comparatively simple aesthetic. Therefore, if you have developed a design that is key to your current or future business objectives, don’t fall prey to the trap of thinking that it might not be patentable. In line with the old cliche, sometimes less is more. 

The Quarles design rights legal team is nationally recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page. To subscribe to our mailing list and receive updates that highlight issues currently affect the design rights legal field, click here.

[1] While the ‘510 Patent was examined under the now-defunct Rosen/Durling standard, the outcome of this case would remain the same if facing the ‘692 Patent under the new regime, which only impacts whether a prior art reference is sufficient to be considered a primary reference in an obviousness-type rejection.