On
The Rosen-Durling test includes two parts for challenging validity of a claimed design. It includes first determining whether a primary prior art reference design is "basically the same" as the patent design considered as a whole. The challenge fails if the answer is no. Otherwise, in order to invalidate the patent design, the challenger must proceed with further art to account for any differences between the reference design and the patented design using additional prior art "so related" to the primary reference. The designs in question in
Appellant argues that the Rosen-Durling test for obviousness is overly rigid. So rigid, in fact, that it qualifies as the type of rigid rule that the later Supreme Court case KSR sought to get rid of. Appellant began its arguments explaining that the Rosen-Durling test prohibits obviousness inquiries unless the primary reference used in that analysis is nearly identical to the invention in question.
On a final note during Appellant's argument,
The USPTO Solicitor went next and sought to modify the Rosen-Durling test, but immediately faced
Appellee focused on the age of the Rosen-Durling test and the amount of caselaw that has been established in that time to further clarify the test, and tried to show that the test is more flexible than Appellant contends. Appellee remarked that part of this flexibility includes that references outside of the same field as the patent may be relevant, and it would depend on the field as to whether the outside reference would be sufficiently similar. Later on, Appellee returned to this point in reference to the Whitman case pointing to it as an example where the field permitted combining two halves of different references rather than finding a first reference that was almost identical to the invention first. Appellee also addressed the question of going around Rosen-Durling to still arrive at an obviousness rejection stating that this isn't impossible, however, there is no known prior example of this and a way to add flexibility to obviousness in design patents would be to acknowledge this other avenue. The judges took a detour to discuss the difference between the ordinary observer standard, which is applied to infringement, and the ordinary designer standard, which is applied to invalidity. The panel seemed troubled by the differences between these standards and the implication that it could lead to a situation where a patent is granted for a design over prior art by pointing out minute differences, but a patent jury would have thought the patented design would have infringed on the prior art and would ignore those differences. Appellee characterized this potential situation as rare, implying it should not be a concern. Then, Appellee turned back to the USPTO's stance and noted that it agrees with the PTO that the Rosen-Durling test should remain, but disagrees that any semantic change or modification should be made as it may not make the test more flexible and would endanger the body of caselaw following Rosen and Durling.
Appellant on rebuttal re-emphasized that the USPTO is really in agreeance with them on the most important question: that there needs to be some change to the law. But Appellant insisted that they disagree with how the USPTO framed in its argument what the test should look like, which should instead be something more like what is used in utility patents and question more broadly what problem a designer is looking to solve. Appellant jumped on the discussion of the ordinary observer vs designer problem that the panel raised and insisted it is a valid concern that should motivate a change of the test.
A prediction of the court's ruling is difficult here because, as
Appellant: "Uh... overrule Rosen and Durling your honor."
*Laughter*
*Laughter*
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