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smgsmc
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Questions Related to Design Patents
« on: May 27th, 2006, 3:04pm »
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Hi.  MPEP Chapt 1500 on Design Patents really has my head spinning because of so many contradictory statements; this is a chapter that really screams out for some concrete examples.   Rather than adding to the infamous 72+ page thread, I would like to break out a thread on design patents.  I did a quick scan on this forum and didn't find an existing one.  If I missed it, please let me know.  
 
To begin, two basic topics.  
 
(1) Hidden features.  MPEP says that you cannot automatically reject a design claim just because the design is hidden under normal use.  But then it goes on to say that if a design is hidden under normal use, it isn't ornamental, which is the basic premise of a design patent.  So when is a hidden feature patentable?
 
(2) Rejections under 103(a).  MPEP says you can't just take pieces of different designs and slap them together.  So, how do you create an obvious combination of one piece of prior art with another piece of prior art?  There is also discussion of 103(a) based on a single prior art reference.  Is a single prior art reference permitted under 103(a)?  I thought the key feature of 103(a) is a combination.
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smgsmc
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Re: Questions Related to Design Patents
« Reply #1 on: May 30th, 2006, 9:56pm »
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Question on best mode.  Old question says that best mode requirement of U.S.C. 112 first paragraph *does* apply to a design patent.  I don't understand how a design, which is strictly ornamental, can have a best mode, or multiple modes at that.  Could someone please explain.
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smgsmc
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Re: Questions Related to Design Patents
« Reply #2 on: May 30th, 2006, 9:58pm »
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on May 27th, 2006, 3:04pm, smgsmc wrote:
Hi.  MPEP Chapt 1500 on Design Patents really has my head spinning because of so many contradictory statements; this is a chapter that really screams out for some concrete examples.   Rather than adding to the infamous 72+ page thread, I would like to break out a thread on design patents.  I did a quick scan on this forum and didn't find an existing one.  If I missed it, please let me know.  
 
To begin, two basic topics.  
 
(1) Hidden features.  MPEP says that you cannot automatically reject a design claim just because the design is hidden under normal use.  But then it goes on to say that if a design is hidden under normal use, it isn't ornamental, which is the basic premise of a design patent.  So when is a hidden feature patentable?
 
(2) Rejections under 103(a).  MPEP says you can't just take pieces of different designs and slap them together.  So, how do you create an obvious combination of one piece of prior art with another piece of prior art?  There is also discussion of 103(a) based on a single prior art reference.  Is a single prior art reference permitted under 103(a)?  I thought the key feature of 103(a) is a combination.

 
Disregard the the question of a single reference under 103(a).  That is OK.  I'd appreciate answers to the other questions though.
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smgsmc
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Re: Questions Related to Design Patents
« Reply #3 on: May 31st, 2006, 9:57am »
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on May 30th, 2006, 9:56pm, smgsmc wrote:
Question on best mode.  Old question says that best mode requirement of U.S.C. 112 first paragraph *does* apply to a design patent.  I don't understand how a design, which is strictly ornamental, can have a best mode, or multiple modes at that.  Could someone please explain.

 
Really confused here.  Got exactly the same question as a repeat.  This time answer says "best mode" requirement does NOT apply to design, because there is only one mode.  This makes sense to me.  Did the law change, or is one answer defective?
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