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United States Court of Appeals
for the Federal Circuit______________________LKQ CORPORATION, KEYSTONE AUTOMOTIVEINDUSTRIES, INC.,
Appellantsv.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee______________________
2021-2348______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR202000534.
______________________
Decided: May 21, 2024______________________MARK A. LEMLEY, Lex Lumina PLLC, New York, NY,argued for appellants. Also represented by MARK P.
MCKENNA; ANDREW HIMEBAUGH, BARRY IRWIN, ARIEL H.
KATZ, IFTEKHAR ZAIM, Irwin IP LLP, Chicago, IL.
JOSEPH HERRIGES, JR., Fish & Richardson P.C., Minneapolis, MN, argued for appellee. Also represented by JOHN
A. DRAGSETH, SARAH JACK; NITIKA GUPTA FIORELLA, Wilmington, DE.
FARHEENA YASMEEN RASHEED, Office of the Solicitor,

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United States Patent and Trademark Office, Alexandria,
VA, argued for amicus curiae United States. Also represented by THOMAS W. KRAUSE, WILLIAM LAMARCA, BRIANRACILLA; BRIAN JAMES SPRINGER, Civil Division, UnitedStates Department of Justice, Washington, DC.
JAMES RICHARD FERGUSON, Mayer Brown, LLP, Chicago, IL, for amici curiae Alliance for Automotive Innovation, Rivian Automotive Inc. Also represented by RYAN T.
BABCOCK, BRIAN W. NOLAN, New York, NY.
CHRISTOPHER V. CARANI, McAndrews, Held & Malloy,
Ltd., Chicago, IL, for amicus curiae American Intellectual
Property Law Association. Also represented by DUNSTANBARNES; SALVATORE ANASTASI, Barley Snyder LLC, Malvern, PA.
JOHN LOUIS CORDANI, Robinson & Cole LLP, Hartford,
CT, for amici curiae American Property Casualty Insurance Association, Certified Automotive Parts Association,
National Association of Mutual Insurance Companies.
Also represented by BENJAMIN M. DANIELS; KYLE GLENDONHEPNER, Washington, DC.
MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Washington, DC, for amici curiae Anthony Andre, Roger Belveal,Peter Bressler, Gordon Bruce, Pieter den Heten, Michael
Derocher, Sridhar Dhulipala, Edward Dorsa, Valerie Fenster, Timothy Fletcher, Esteban Fridman, Michael Garten,
Deborah George, Joellyn Gray, Jon Christopher Hacker,
David Hodge, Institute for Design Science and Public Policy, James Kaufman, Haig Khachatoorian, Carlton Lay,
Gustavo Lopes Jota, Theo Mandel, Charles Lee Mauro,George McCain, Christopher Daniel Morley, Adrian
O'Heney, Nancy Perkins, Scott Peterson, Lloyd Philpott,Jennifer Pierce, RitaSue Siegel, John Stram, Joyce
Thomas, Steven Visser, Angela Yeh, Sal Ziauddin. Also
represented by ROBERT JAMES SCHEFFEL; PERRY SAIDMAN,

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Perry Saidman, LLC, Miami Beach, FL.
MARK D. SELWYN, Wilmer Cutler Pickering Hale andDorr LLP, Palo Alto, CA, for amicus curiae Apple Inc. Also
represented by SHARCHUN DENNIS WANG; BENJAMIN S.
FERNANDEZ, Denver, CO; MARK CHRISTOPHER FLEMING,
Boston, MA; LAURA E. POWELL, Washington, DC; TRACYGENE GRAVELINE DURKIN, Sterne Kessler Goldstein & Fox
PLLC, Washington, DC.
SETH DAVID GREENSTEIN, Constantine Cannon LLP,
Washington, DC, for amicus curiae Auto Care Association.
ROBERT GLENN OAKE, JR., Oake Law Office, Allen, TX,
for amicus curiae Automotive Body Parts Association.
PHILLIP R. MALONE, Juelsgaard Intellectual Property
and Innovation Clinic, Mills Legal Clinic, Stanford Law
School, Stanford, CA, for amici curiae Mark Bartholomew,
Digital Right to Repair Coalition, Shubha Ghosh, iFixit,
Aaron Perzanowski, Ana Santos Rutschman, Joshua D.
Sarnoff, Securepairs, Katherine J. Strandburg, UnitedStates Public Interest Research Group, Inc.
ALEXANDER CHEN, InHouse Co Law Firm, Irvine, CA,
for amicus curiae Eagle Eyes Traffic Industrial Co., Ltd.
FRANK A. ANGILERI, Brooks Kushman PC, Royal Oak,MI, for amicus curiae Ford Motor Company. Also represented by MARC LORELLI.
WILLIAM ADAMS, Quinn Emanuel Urquhart & Sullivan,
LLP, New York, NY, for amici curiae Hyundai Motor Company, Kia Corp. Also represented by DONGKWAN JAMESPAK, Los Angeles, CA.
ROBERT S. KATZ, Banner & Witcoff, Ltd., for amicus curiae Industrial Designers Society of America, Inc. Also

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represented by SONIA MARY OKOLIE; ERIK S. MAURER, Chicago, IL.
PAUL BERGHOFF, McDonnell Boehnen Hulbert &Berghoff LLP, Chicago, IL, for amicus curiae Intellectual
Property Owners Association.
BRUCE EWING, Dorsey & Whitney LLP, New York, NY,
for amicus curiae International Trademark Association.
Also represented by MARTIN SCHWIMMER, Leason Ellis,
LLP, White Plains, NY.
CHARLES R. MACEDO, Amster Rothstein & Ebenstein
LLP, New York, NY, for amicus curiae New York Intellectual Property Law Association. Also represented by DAVIDGOLDBERG; PAUL A. COLETTI, Johnson & Johnson, New
Brunswick, NJ; ROBERT J. RANDO, Greenspoon Marder
LLP, New York, NY; KSENIA TAKHISTOVA, E. Brunswick,
NJ.
ROBERT J. FIGA, Dean & Fulkerson, PC, Troy, MI, for
amicus curiae Taiwan Auto Body Parts Assoc.
______________________
Before MOORE, Chief Judge, LOURIE, DYK, PROST, REYNA,TARANTO, CHEN, HUGHES, STOLL, and STARK,
Circuit Judges. 1
Opinion for the court filed by Circuit Judge STOLL, inwhich Chief Judge MOORE and Circuit Judges DYK,PROST, REYNA, TARANTO, CHEN, HUGHES, and STARK join.

Circuit Judge Newman and Circuit Judge Cunningham did not participate. Circuit Judge Clevenger, who
was a member of the original panel, also did not participate.
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Opinion concurring in the judgment filed by
Circuit Judge LOURIE.
STOLL, Circuit Judge.
This case involves the standards for assessing nonobviousness of design patents under 35 U.S.C. § 103.
The principal question that this case presents iswhether Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), should cause
us to rethink the long-standing Rosen-Durling test used toassess nonobviousness of design patents. We answer in theaffirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically thesame” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of thosefeatures to the other. We adopt an approach consistent
with Congress’s statutory scheme for design patents, which
provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible
approach than the Rosen-Durling test for determining nonobviousness.
BACKGROUND
GM Global Technology LLC (“GM”) owns U.S. Design
Patent No. D797,625, which claims a design for a vehicle’s
front fender. This design is used in GM’s 2018–2020 Chevrolet Equinox.
Appellants LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) filed a petition to
institute an inter partes review of GM’s D’625 patent, asserting that the challenged claim is unpatentable under
35 U.S.C. § 102 based on U.S. Design Patent No. D773,340(“Lian”) or under 35 U.S.C. § 103 based on Lian alone or
Lian as modified by a promotional brochure depicting thedesign of the front fender on the 2010 Hyundai Tucson

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GM GLOBAL TECHNOLOGY OPERATIONS LLC(“Tucson”). LKQ presented the following comparisons between the D’625 patent, Lian, and Tucson:

Appellants’ Br. at 5–6. Figures 1–4 of the D’625 patent illustrate the claimed front fender from a perspective view,a side view, a front view, and a top view, respectively.
The Board held that LKQ had not established by a preponderance of evidence that Lian anticipates the claim of
the D’625 patent. LKQ Corp. v. GM Glob. Tech. Operations

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LLC, IPR2020-00534, 2021 WL 3411458, at *16 (P.T.A.B.
Aug. 4, 2021) (“Board Decision”). Specifically, the Board
applied the ordinary observer test for anticipation of a design patent set forth in Gorham Manufacturing Co.
v. White, 81 U.S. 511 (1871), which provides that “if, in theeye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially thesame, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be theother, the first one patented is infringed by the other.”
Board Decision, 2021 WL 3411458, at *7 (quoting Gorham,
81 U.S. at 528) (alteration omitted). The Board found thatwhile “there are certain articulable and visible similarities
in the overall appearance of the claimed design and Lianthat would be apparent to an ordinary observer,” differences between the designs, including (1) the wheel archshape and the terminus; (2) door cut line; (3) protrusion;(4) sculpting; (5) inflection line; (6) the first and second
creases; and (7) the concavity line, affect the overall visual
impression of each design such that they are not substantially the same. Id. at *11–16.
The Board then applied the long-standing Rosen-Durling test to assess the nonobviousness of the claimed design.
Under this two-part test, first, In re Rosen requires that“[b]efore one can begin to combine prior art designs . . . one
must find a single reference, ‘a something in existence, thedesign characteristics of which are basically the same as
the claimed design.’” Durling v. Spectrum Furniture Co.,
Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re
Rosen, 673 F.2d 388, 391 (CCPA 1982)). This primary reference is commonly referred to as the Rosen reference. As
the Board explained, Rosen’s “basically the same” test requires consideration of the visual impression created by thepatented design as a whole. Rosen, 673 F.2d at 391. If no
Rosen reference is found, the obviousness inquiry ends
without consideration of step two. Durling, 101 F.3d

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at 105 (“Without such a primary reference, it is improperto invalidate a design patent on grounds of obviousness.”).
At step two, Durling requires that “[o]nce this primaryreference is found, other references may be used to modify
it to create a design that has the same overall visual appearance as the claimed design.” Id. at 103. But anotherthreshold must be met. Specifically, any secondary references must be “so related [to the primary reference] thatthe appearance of certain ornamental features in one
would suggest the application of those features to theother.” Id. (alteration in original) (quoting In re Borden,
90 F.3d 1570, 1575 (Fed. Cir. 1996)).
In this case, the Board determined that LKQ failed toestablish that the challenged claim would have been obvious because LKQ failed to identify a Rosen reference. LKQ
had proffered Lian as its Rosen reference. Identifying thesame differences it emphasized with regard to anticipation,
the Board found that Lian differs from the claimed designin “the upper protrusion, the u-shaped notch, the door cut
line, a circular wheel arch, the lower rear terminus, . . .
first and second creases along with the concavity line, andthe inflection line.” Board Decision, 2021 WL 3411458,
at *20. Considering these differences together, the Board
found that Lian does not “create[] ‘basically the same’ visual impression” as the patented design. Id. (quoting Durling, 101 F.3d at 103). Accordingly, the Board ended its
obviousness analysis without further consideration.
LKQ appealed, and a panel of this court affirmed theBoard decision. LKQ Corp. v. GM Global Tech. Operations
LLC, No. 2023-2348, 2023 WL 328228 (Fed. Cir. Jan. 20,2023) (“Panel Decision”). The panel concluded that substantial evidence supports the Board’s finding that Lianand the claimed design “created different overall impressions” and, thus, Lian did not anticipate the D’625 patent.
Id. at *4. The panel then addressed LKQ’s argument that
the Supreme Court’s decision in KSR, implicitly overruled

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the Rosen and Durling tests. The panel rejected GM’s assertion that LKQ forfeited this argument by not raising it
before the Board, determining that LKQ’s petition to theBoard was “sufficient to preserve the argument” and that
“this challenge to Rosen and Durling is a pure question oflaw that undoubtedly presents a significant question ofgeneral impact, favoring the exercise of our discretion tohear and decide this issue.” Id. at *4–6. On the merits, thepanel explained that it could not “overrule Rosen or Durling without a clear directive from the Supreme Court” and“it is not clear” that the Supreme Court had done so. Id.
at *6. In applying Rosen and Durling, the majority affirmed the Board’s nonobviousness determination, concluding that substantial evidence supports the Board’s
findings that “LKQ failed to identify ‘the correct visual impression created by the patented design as a whole,’” andthat “LKQ failed to show that Lian creates ‘basically thesame’ visual impression as the claimed design.” Id. at *6–
7 (first quoting Durling, 101 F.3d at 103; and then quoting
Rosen, 673 F.2d at 390–91).
Judge Stark wrote a concurrence-in-part, disagreeing
with the majority on the issue of forfeiture. He agreed,
however, that it is not clear whether KSR overruled Rosenor Durling, but noted that there exists “at minimum, substantial tension between the Supreme Court’s holding in
KSR and our . . . test.” Id. at *13 (Stark, J., concurring-inpart). The concurrence-in-part elaborated that the Rosenreference requirement may be “precisely the type of limiting, rigid rule KSR faulted,” as the obviousness analysis
stops without a Rosen reference, and, similarly, the “so related” requirement of Durling presents “[a]dditional rigidity that might not be appropriate in a post-KSR world.” Id.
Judge Lourie presented additional views, disagreeing
with LKQ’s argument that KSR overruled Rosen because“KSR did not involve design patents,” which are distinct
from utility patents. Id. at *8 (Lourie, J., additional views).
Judge Lourie further noted that “[w]hile 35 U.S.C.

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GM GLOBAL TECHNOLOGY OPERATIONS LLC§ 103 . . . does not differentiate . . . [and] applies to all typesof patents, the considerations involved in determining obviousness are different” for utility patents versus design
patents. Id. Specifically, for design patents, the considerations include “the overall appearance, visual impressions,artistry, and style of ornamental subject matter” while for
utility patents, we consider “unexpected properties, utility,and function.” Id.
This court granted rehearing en banc and vacated thepanel opinion. See LKQ Corp. v. GM Glob. Tech. Operations LLC, 71 F.4th 1383, 1384 (Fed. Cir. 2023). Among
otherquestions,
our
order
requestedbriefing
on: (1) whether KSR overrules or abrogates the RosenDurling test; (2) if not, whether the court should nonetheless eliminate or modify the Rosen-Durling test; and (3) if
we answer either of these two questions affirmatively,
what test should apply for evaluating design patent obviousness challenges. Id. at 1384–85. We reinstate the portion of the panel opinion holding that substantial evidence
supports the Board’s finding of no anticipation. The panel
decision remains vacated in all other respects. We vacate
the final written decision of the Board as to the nonobviousness determination and remand for further proceedings
consistent with this opinion.
DISCUSSIONI
A design patent protects a “new, original and ornamental design for an article of manufacture.” 35 U.S.C.
§ 171(a). Under the Patent Act, the statutory provisions“relating to patents for inventions,” or utility patents,“shall apply to patents for designs, except as otherwise provided.” Id. § 171(b). Our discussion of nonobviousness of adesign or utility patent claim should start with the statutory language of § 103, which states in pertinent part:Case: 21-2348

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A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention
is not identically disclosed as set forth in section
102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before
the effective filing date of the claimed invention toa person having ordinary skill in the art to which
the claimed invention pertains.
Id. § 103. The Supreme Court addressed the meaning of
the statute in Graham v. John Deere Co. of Kansas City,
which involved utility patents. 383 U.S. 1 (1966). The
Court in Graham explained that the ultimate question of
obviousness is one of law based on “several basic factual
inquiries.” Id. at 17. The Court elaborated that under§ 103, these factual inquiries include “the scope and content of the prior art”; “differences between the prior art andthe claims at issue”; and “the level of ordinary skill in thepertinent art.” Id. In addition to these factors, “[s]uch secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized togive light to the circumstances surrounding the origin of
the subject matter sought to be patented” and may be relevant as “indicia of obviousness or nonobviousness.” Id.
at 17–18. The ultimate question is whether differences between the claimed invention and the prior art are such thatthe claimed invention as a whole would have been obvious
to a person of ordinary skill in the pertinent art at the timeof the invention.
More recently, the Supreme Court again addressed thestandards for assessing nonobviousness in KSR. 550 U.S.
398. There, the district court had held Teleflex’s utility patent claim obvious based on its findings that (1) a first prior
art reference taught every limitation of the claim except
one; (2) this missing aspect was taught in two other prior
art references; and (3) a person of ordinary skill in the art
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reference to include the missing aspect taught by the secondary prior art references. Id. at 413. The Supreme
Court in KSR specifically addressed the “teaching, suggestion, or motivation” or “TSM” test recited in our precedent,
under which a patent claim was only proved obvious if“some motivation or suggestion to combine the prior art
teachings” existed in “the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in
the art.” Id. at 407. We had previously applied the TSM
test to prevent factfinders from falling victim to hindsightbias in determining whether there was a reason to combine
prior art references to arrive at the claimed invention. Id.
at 421.
The Supreme Court rejected our rigid application of theTSM test in the case before it. The Court explained that
Graham “set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its
TSM test here.” Id. at 415. The Court reasoned that while
factfinders should guard against hindsight, “[r]igid preventative rules that deny factfinders recourse to common
sense” are improper under § 103. Id. at 421. The Court
further explained that a person of ordinary skill in the art
could find a motivation to combine prior art references inways other than meeting the TSM test as rigidly applied.
The Court noted, for example, that design incentives andmarket forces could be a reason to apply an invention fromone field into another, and that a patent claim might beproved obvious with a showing that it would have been “obvious to try” a “finite number of identified, predictable solutions” to a problem where there is “a design need or
market pressure to solve.” Id. at 417, 421. The Court explained that while the TSM test might provide helpful insight on the obviousness of an invention, such insights“need not become rigid and mandatory formulas” as the“obviousness analysis cannot be confined by a formalistic
conception.” Id. at 419.

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IIThe Supreme Court has also addressed the validity ofdesign patent claims in view of combined prior art designs.
Most notably, in Smith v. Whitman Saddle Co., the Supreme Court considered whether a design patent claim directed to an ornamental design for a saddle was patentablein view of the combination of two prior art saddles, known
as the Granger tree and the Jenifer or Jenifer-McClellan
tree. 148 U.S. 674, 680 (1893). 2 Comparing the claimed
saddle design to the prior art, the Court explained that:
The saddle design described in the [patent] specification differs from the Granger saddle in the substitution of the Jenifer cantle [raised rear part] forthe low, broad cantle of the Granger tree. In otherwords, the front half of the Granger and the rearhalf of the Jenifer, or Jenifer-McClellan, make up
the saddle in question, though it differs also fromthe Granger saddle in that it has a nearly perpendicular drop of some inches at the rear of the pommel [upper front part], that is, distinctly more of adrop than the Granger saddle had.
Id. In this way, the Supreme Court explained that theclaimed design was made up of the front half of one known
saddle and the back half (or cantle) of another, with a further modification to one half. The Supreme Court explained that the record evidence showed that there wereseveral hundred types of saddles, “and that it was customary for saddlers to vary the shape and appearance of saddletrees [saddle frames] in numerous ways, according to

At the time, patent law did not speak of obviousness. The Whitman Saddle Court addressed the matter byreference to “the inventive faculty.” 148 U.S. at 679. The
reasoning of Whitman Saddle carries over to the modern§ 103 standard of obviousness.
2

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the taste and fancy of the purchaser.” Id. at 681. Addressing the combination of the Granger and Jenifer saddles, theCourt determined that “[n]othing more was done in this instance (except as hereafter noted) than to put the two
halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way andmanner ordinarily done,” and that “the addition of a known
cantle to a known saddle, in view of the fact that such useof the cantle was common,” did not make the claimed saddle design inventive. Id.
The Court then turned to the primary “difference between the pommel of [the claimed] saddle [design] and thepommel of the Granger saddle, namely, the drop at the rearof the pommel.” Id. The Court withheld judgment on thevalidity of the overall design given this secondary difference in design. Rather, the Court held that if this secondary difference was “what was new and to be material,” it
was not present in the potentially infringing saddle, and assuch, no infringement could occur. Id. at 682.
In short, the Court considered the prior art in the fieldof the article of manufacture, the knowledge of an ordinary
saddler, and the differences between the prior art and theclaimed design, and concluded that combining the two
known saddle designs was nothing more than an “exerciseof the ordinary skill of workmen of the [saddle] trade.” Id.
at 681. The Court refrained from drawing the same conclusion for a secondary modification without evidence that
it was known in the prior art or similar to the existing prior
art references.
III
Our test for design patent obviousness, in its present
form, does not adequately align with KSR, Whitman Saddle, and other precedent, both in terms of its frameworkand threshold rigidity. Rosen-Durling is out of keepingwith the Supreme Court’s general articulation of theCase: 21-2348

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principles underlying obviousness, as well as its specifictreatment of validity of design patents.
LKQ urges us to conclude that KSR overruled or abrogated Rosen and Durling. LKQ made the same argument
to the panel, which rejected the argument. See Panel Decision, 2023 WL 328228, at *6 (“[I]t is not clear the Supreme
Court has overruled Rosen or Durling.”). While a panel has
the ability only in certain narrow circumstances to conclude that this court’s own precedent “has been implicitly
overruled as inconsistent with intervening Supreme Court
authority,” Troy v. Samson Mfg. Corp., 758 F.3d 1322,
1326 (Fed. Cir. 2014), that demanding standard does notbind this court sitting en banc. See South Corp. v. UnitedStates, 690 F.2d 1368, 1370 n.2 (Fed. Cir. 1982); Deckers
Corp. v. United States, 752 F.3d 949, 959 (Fed. Cir. 2014).
We therefore have no need to decide whether that standard
is met here.
The en banc court has never considered the merits of
the Rosen-Durling test, and we now take this opportunity,
sitting en banc, to do so in light of § 103, Supreme Court
precedent, and our own precedent guiding the nonobviousness inquiry for utility patents. We do so bearing in mind
the respect due to long-standing panel precedents evenwhen the en banc court is newly considering an issue. See
Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305,
1316–17 (Fed. Cir. 2013) (en banc).
We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically thesame” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference thatfeatures in one would suggest application of those features
to the other—are improperly rigid. The statutory rubric
along with Supreme Court precedent including Whitman
Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.

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1Design patents and utility patents are, of course, different. Nevertheless, “[d]esign patents, like utility patents,
must meet the nonobviousness requirement of 35 U.S.C.
§ 103.” Titan Tire Corp. v. Case New Holland, Inc.,566 F.3d 1372, 1380, 1384–85 (Fed. Cir. 2009); see also
35 U.S.C. § 171(b) (“The provisions of this title relating topatents for inventions shall apply to patents for designs,
except as otherwise provided.”).
The § 103 obviousness language sets forth an expansive and flexible approach for assessing obviousness, involving assessment of the “differences between the claimed
invention and the prior art” and whether those differences
are such that the invention as a whole would have been
obvious to a person of ordinary skill in the field to which
the claimed design pertains. Rosen’s rigid requirement
limiting a primary reference to designs that are “basicallythe same” as the claimed design—and abruptly ending theanalysis in the absence of such a reference—imposes limitations absent from § 103’s broad and flexible standard.
The Rosen “basically the same” requirement is also inconsistent with the Supreme Court’s analysis in Whitman
Saddle. There, the Court did not ask whether the designof the prior art Granger saddle was “basically the same” asthe claimed saddle design. Instead, the Supreme Court
acknowledged that the claimed design combined the front
half of Granger with the rear half of Jenifer, 148 U.S.
at 680, suggesting that neither Granger nor Jenifer would
qualify as a Rosen reference. Moreover, even though neither prior art saddle design was “basically the same” as theclaimed design, the Supreme Court continued its analysis
and held that combining the front half of the Granger saddle with the back half of the Jenifer saddle was not inventive because it was “customary for saddlers” to makesuch combinations. Id. at 681. This analysis reflects thereality that the one-size-fits all approach of Rosen—inCase: 21-2348

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which a single primary reference discloses nearly every aspect of the claimed design—does not fit all obviousness scenarios for designs and cannot be reconciled with Supreme
Court precedent.
Indeed, as the Supreme Court explained in KSR, “whena court transforms [a] general principle into a rigid rulethat limits the obviousness inquiry, . . . it errs.” KSR,
550 U.S. at 419. The Court in KSR emphasized that both§ 103 and Graham “set forth an expansive and flexible approach” to obviousness and reiterated “the need for caution
in granting a patent based on the combination of elements
found in the prior art.” Id. at 415. Continuing, the Court
explained, “[r]igid, preventative rules that deny factfinders
recourse to common sense, . . . are neither necessary under
our case law nor consistent with it.” Id. at 421. Because
the strict Rosen reference requirement—in which an obviousness analysis fails absent a prior art design that is “basically the same” as the claimed design—is such a rigid
rule, we conclude that it is inconsistent with the Supreme
Court’s general guidance in KSR.
2
We reach the same conclusion for step two of the RosenDurling test. Under step two, a fact finder may consider
ornamental features missing in a primary reference but
shown in secondary reference(s) only when the secondaryreference(s) are “so related to the primary reference thatthe appearance of certain ornamental features in one
would suggest the application of those features to theother.” Durling, 101 F.3d at 103 (alterations omitted)(quoting Borden, 90 F.3d at 1575). Like the Rosen reference requirement, this “so related” requirement is at odds
with the broad standard for obviousness set forth in § 103
and Supreme Court precedent.
First, § 103 requires consideration of the differences
between the claimed design and prior art designs and an
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obvious to a person of ordinary skill in the relevant field.
When the answer to this question is affirmative, the statute provides that a patent may not be obtained. The statute gives no indication that a secondary prior art reference
need be “so related” to the primary that—as the Durling
test is too readily understood to demand—it creates its own
motivation to combine the two prior art references.
We agree with LKQ that Durling’s inflexible “so related” requirement is analogous to the rigid application of
the teaching-suggestion-motivation test rejected by the Supreme Court in KSR. Just as the Supreme Court in KSR
explained that the TSM test had sometimes been applied
as if it had evolved from a useful insight to a rigid rule, theDurling “so related” requirement has evolved into a rigid
rule that limits the broad standard set forth in § 103 and“den[ies] factfinders recourse to common sense” when assessing a motivation to combine prior art references. KSR,
550 U.S. at 421.
The Durling so-related test is also inconsistent with
the Supreme Court’s decision in Whitman Saddle. There,
in considering a claimed design that essentially combined
the front half of the Granger saddle with the rear half (specifically, the cantle) of the Jenifer saddle, the Supreme
Court did not ask whether the Granger and Jenifer references were “so related” that the use of certain ornamental
features in one would suggest the application of those features to the other. Whitman Saddle, 148 U.S. at 680–81.
Rather, in a manner consistent with the Graham framework for assessing obviousness of utility patents, the Supreme Court explained that it was not inventive for asaddler to combine the front half of Granger with the cantleof Jenifer because record evidence established that “it wascustomary for saddlers to vary the shape and appearanceof saddletrees in numerous ways, according to the taste
and fancy of the purchaser” and “the Jenifer cantle wasused upon a variety of saddles.” Id. at 681. The Court reasoned that, based on this evidence, “[n]othing more wasCase: 21-2348

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done in this instance (except as hereafter noted) than to
put the two halves of these saddles together in the exerciseof the ordinary skill of workmen of the trade, and in theway and manner ordinarily done.” Id. Continuing, theCourt explained the “addition of a known cantle to a known
saddle,” was not inventive “in view of the fact that such useof the cantle was common.” Id. The Court thus relied on
the knowledge and practice of a saddler or ordinary workman of the trade instead of a “so related” requirement to
combine prior art references. Id.
IV
Having overruled Rosen and Durling, we consider what
the framework for evaluating obviousness of design patentclaims should be. We are guided by the language of § 103,
as well as the Supreme Court’s and our court’s precedenton obviousness in both the design and utility patent contexts. We are also mindful of the differences between design and utility patents, as well as the policy concerns
emphasized by the parties and amici. Ultimately, we agreewith our precedent holding that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as
analytical tools for reviewing the validity of a utility patent
under § 103, that is, on application of the Graham factors.”
Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462
(Fed. Cir. 1997).
1
Applying Graham factor one, the fact finder should
consider the “scope and content of the prior art” within theknowledge of an ordinary designer in the field of the design.
See Graham, 383 U.S. at 17. In determining the scope of
the prior art, there is no threshold similarity or “basicallythe same” requirement to qualify as prior art. Rather, ananalogous art requirement applies to each reference. The
analogous art requirement reins in the scope of prior art
and serves to guard against hindsight. We reaffirm that

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an analogous art requirement applies for obviousness of design patents. 3
We have stated that a “reference qualifies as prior art
for an obviousness determination only when it is analogous
to the claimed invention.” Airbus S.A.S. v. Firepass Corp.,
941 F.3d 1374, 1379 (Fed. Cir. 2019) (citing In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011)). The analogous art
requirement is tied to the statutory language of § 103 inthat it provides the perspective of the person of ordinary
skill in the art by defining that person’s scope of knowledge.
The rationale is that a person of ordinary skill “could not
possibly be aware of every teaching in every art” and thus
we limit the scope of the prior art to analogous arts. See
Airbus, 941 F.3d at 1381–82 (quoting In re Wood, 599 F.2d
1032, 1036 (CCPA 1979)). The analogous art requirement
is also “meant to defend against hindsight.” See Netflix,
Inc. v. DivX, LLC, 80 F.4th 1352, 1358 (Fed. Cir. 2023)(quoting Kahn, 441 F.3d at 987); see also In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1992) (“The combination ofelements from non-analogous sources, in a manner that reconstructs the applicant’s invention only with the benefit

Neither party has argued at any stage of this appeal that an analogous art requirement should not apply
when determining obviousness of design patent claims.
See Oral Arg. at 0:30–0:57 (LKQ agreed that a design patent analogous arts test should exist); id. at 31:42–31:47(United States agreed with the same); and id. at 1:09:56–
1:10:11 (GM agreed regarding the potential scope of analogous
art),
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21-2348_02052024.mp3.
It is also wellestablished that the analogous art requirement is part of
the Graham analysis. See In re Kahn, 441 F.3d 977, 986(Fed. Cir. 2006) (“[T]he ‘analogous art’ test . . . has long
been part of the primary Graham analysis articulated by
the Supreme Court.”).
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of hindsight, is insufficient to present a prima facie case ofobviousness.”).
An important precedent that preceded adoption of the
Rosen-Durling test, and introduced the “so related” phrase,
supports application of an analogous art requirement to design patents. In In re Glavas, 230 F.2d 447 (CCPA 1956),
the patent at issue related to the ornamental design for a
float (e.g., a life preserver) and the Board affirmed a final
rejection of the patent based on a patent relating to a float
in view of patents relating to a cushion and a pillow. The
Board added an additional ground for rejection based onother secondary references—patents relating to bottles, arazor blade sharpener, and a bar of soap. On appeal, thecourt grappled with whether the analogous art requirement for utility patents applies to obviousness of design patents. Ultimately, the court concluded that “[t]he principleof nonanalogous arts . . . cannot be applied to design cases
in exactly the same manner as to mechanical cases,” because design patent combinations rely on appearance rather than use. Glavas, 230 F.2d at 450. In the very next
sentence, the Glavas court then created the “so-related” requirement for design cases: “The question in design cases
is not whether the references sought to be combined are inanalogous 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.” Id. In applying the “so related” test,
the court addressed the analogous art issue by noting thatwhile pillows may plausibly be related art to a float, a designer of a float would not likely turn to bottles, soap, or
razor blade sharpeners for design inspiration. Id. at 450–
51.
Glavas thus created the “so related” test as a designcontext proxy or replacement for the analogous art requirement of utility cases. Unfortunately, application of the
Rosen-Durling test over time has become rigid to the point
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abandoning the underlying analogous art requirement forassessing nonobviousness of design patents and we return
to a more flexible fact-based analysis of whether the references are analogous art in a manner similar to utility patents. This approach casts aside a threshold “so-related”
requirement but maintains the threshold analogous art requirement.
For utility patents, we use a two-part test to determine
the scope of analogous art: (1) whether the art is from thesame field of endeavor as the claimed invention; and (2) if
the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is involved. See Airbus S.A.S, 941 F.3d at 1379. This is a factdependent inquiry that requires a case-by-case determination. See id. (“Whether a reference qualifies as analogous
prior art is a question of fact . . . .”).
We conclude that the first part of this two-part test applies to design patents in a straightforward manner. In
other words, analogous art for a design patent includes art
from the same field of endeavor as the article of manufacture of the claimed design. See 35 U.S.C. § 171(a) (“Whoever invents any new, original and ornamental design for
an article of manufacture may obtain a patent therefor . . . .” (emphasis added)). As we have previously held,“[t]he scope of the prior art is not the universe of abstract
design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that aperson of ordinary skill would look to such articles for theirdesigns.” Hupp, 122 F.3d at 1462.
On the other hand, the second part of the two-part
analogous art test for utility patents would not seem to apply to design patents in the same way, and how to translate
this part of the test into the design context is less apparent.
Unlike a utility patent, a design patent itself does notclearly or reliably indicate “the particular problem with

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which the inventor is involved.” See Airbus S.A.S, 941 F.3d
at 1379 (emphasis added). Indeed, design patents have nowritten description or written claims to define their scope;
the invention is defined by the overall visual impressionthat the drawings convey. See Egyptian Goddess, Inc.
v. Swisa Inc., 543 F.3d 665, 679–80 (Fed. Cir. 2008) (enbanc) (a design claim is better represented by an illustration). Moreover, at oral argument, the parties disputed
whether an ornamental design for an article of manufacture could be viewed as solving a problem. See Oral Arg.
at 2:08–3:11, 1:09:12–1:10:29, https://oralarguments.cafc.
uscourts.gov/default.aspx?fl=21-2348_02052024.mp3.
In this opinion, we do not delineate the full and precise
contours of the analogous art test for design patents. Priorart designs for the same field of endeavor as the article ofmanufacture will be analogous, and we do not foreclosethat other art could also be analogous. Whether a prior art
design is analogous to the claimed design for an article ofmanufacture is a fact question to be addressed on a caseby-case basis and we “leave it to future cases to further develop the application of this standard.” Cf. Egyptian Goddess, 543 F.3d at 679 (quoting In re Seagate Tech., LLC,
497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc)).
In applying Graham factor one, the scope and content
of the prior art, a primary reference must be identified.
Identifying a primary reference protects against hindsightbecause “almost every new design is made up of elements
which, individually, are old somewhere in the prior art.”
Glavas, 230 F.2d at 450. As noted above, this primary reference need not be “basically the same” as the claimed design.
Rather, the primary reference need only be“something in existence—not . . . something that might bebrought into existence by selecting individual featuresfrom prior art and combining them, particularly wherecombining them would require modification of every individual feature.” In re Jennings, 182 F.2d 207, 208 (CCPA1950). The primary reference will likely be the closest priorCase: 21-2348

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art, i.e., the prior art design that is most visually similar tothe claimed design. The more visually similar the primaryreference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.
The primary reference will typically be in the same field of
endeavor as the claimed ornamental design’s article ofmanufacture, but it need not be, so long as it is analogous
art. It is often the case that the primary reference alone
does not render the claimed design obvious, and design elements from secondary prior art references may be considered as discussed below.
2
After considering the scope and content of the prior art,
we turn to Graham factor two: determining the differences
between the prior art designs and the design claim at issue.
Graham, 383 U.S. at 17. This approach casts aside athreshold “similarity” requirement.
The Supreme Court has explained that design patents
protect the appearance of the design on an article of manufacture, and thus, in the context of design patent infringement, we compare the visual appearance of the claimed
design with that of allegedly infringing design. See
Gorham, 81 U.S. at 526–27 (“[T]he true test of identity ofdesign . . . must be sameness of appearance”); see also
Egyptian Goddess, 543 F.3d at 676 (focusing on the “overall appearance of the design” when assessing infringement). Likewise, in addressing the differences between theclaimed design and prior art designs for validity purposes,
we compare the visual appearance of the claimed design
with prior art designs, albeit from the perspective of an ordinary designer in the field of the article of manufacture.
See Apple, Inc. v. Samsung Elects., Co., 678 F.3d 1314,
1329 (Fed. Cir. 2012) (characterizing obviousness as
whether “one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design”) (quoting Titan Tire,

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566 F.3d at 1381); Borden, 90 F.3d at 1574, 1576 (affirming the Board’s affirmance of an obviousness rejection
where the examiner found “differences between the [priorart] and appellant’s design had little or no effect on theoverall appearance of the design”); Dobson v. Dornan,
118 U.S. 10, 15 (1886) (“Undoubtedly, the claim in this casecovers the design as a whole, and not any part of it as apart, and it is to be tested as a whole as to novelty and infringement.”).
3
Under Graham factor three, “the level of ordinary skill
in the pertinent art [must be] resolved.” Graham, 383 U.S.
at 17. This requirement comes directly from § 103, which
provides that a claimed invention is unpatentable if it“would have been obvious before the effective filing date of
the claimed invention to a person of ordinary skill in theart to which the claimed invention pertains.” 35 U.S.C.
§ 103.
In the design patent context, we have interpreted “aperson of ordinary skill in the art to which the invention
pertains” in § 103 as meaning that obviousness of a design
patent claim is assessed from the viewpoint of an ordinary
designer in the field to which the claimed design pertains.
In In re Nalbandian, our predecessor court explained that,consistent with Graham, “[i]n design cases we will consider
the fictitious person identified in § 103 as ‘one of ordinary
skill in the art’ to be the designer of ordinary capability who
designs articles of the type presented in the application.”
661 F.2d 1214, 1216 (CCPA 1981). In other words, for Graham factor three, we consider the knowledge of “a designerof ordinary skill who designs articles of the type involved.”
Borden, 90 F.3d at 1574 (citation omitted); Hupp, 122 F.3d
at 1462 (“The determination of the ultimate question of obviousness is made from the viewpoint of a person of ordinary skill in the field of the patented design.”); Whitman
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the perspective of “the ordinary skill of workmen of the
trade” and an ordinary “saddler”).
4
After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of theprior art, and the differences between the prior art and theclaimed design, the obviousness or nonobviousness of theclaimed design is evaluated. We have previously described
this inquiry as whether an ordinary designer in the field towhich the claimed design pertains would have been motivated to modify the prior art design “to create the same
overall visual appearance as the claimed design.” Campbell Soup, Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275
(Fed. Cir. 2021) (citation and quotation marks omitted); seealso Borden, 90 F.3d at 1574. We reaffirm that the “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”Borden, 90 F.3d at 1574.
Where a primary reference alone does not render theclaimed design obvious, secondary references may be considered. The primary and secondary references need not
be “so related” such that features in one would suggest application of those features in the other but they must bothbe analogous art to the patented design. Consistent with
KSR, the motivation to combine these references need notcome from the references themselves. KSR, 550 U.S.
at 418–19 (rejecting a rigidly applied TSM test). But there
must be some record-supported reason (without hindsight)that an ordinary designer in the field of the article of manufacture would have modified the primary reference withthe feature(s) from the secondary reference(s) to create thesame overall appearance as the claimed design. See Campbell Soup, 10 F.4th at 1275 (discussing the question ofwhether “an ordinary designer would have modified theprimary reference to create a design that has the same
overall visual appearance as the claimed design”); see also

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Amicus United States Br. at 12–13 (describing factors toconsider including “ordinarily skilled designer’s experience, creativity,” as well as “what market demands and industry customs exist” in the relevant field and, “which
ornamental features are commonplace in the relevant
field”). Just as with the analogous art inquiry, in the areaof motivation to combine, the problem to be solved may
have less relevance in the design patent context than in theutility patent context. Of course, it follows that the moredifferent the overall appearances of the primary reference
versus the secondary reference(s), the more work a patentchallenger will likely need to do to establish a motivation
to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid ofhindsight.
5
Consistent with Graham, the obviousness inquiry fordesign patents still requires assessment of secondary considerations as indicia of obviousness or nonobviousness,when evidence of such considerations is presented. Graham, 383 U.S. at 17–18 (“Such secondary considerations ascommercial success, long felt but unsolved needs, failure ofothers, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought
to be patented.”). In prior cases involving design patents,
we have confirmed that commercial success, industry
praise, and copying may demonstrate nonobviousness ofdesign patents. Campbell Soup, 10 F.4th at 1276–79 (considering evidence of commercial success, industry praise,and copying); MRC Innovations, Inc. v. Hunter Mfg., LLP,
747 F.3d 1326, 1335–36 (Fed. Cir. 2014) (same). We do not
disturb our existing precedent regarding the application of
secondary considerations such as commercial success, industry praise, and copying to the obviousness analysis indesign patents. It is unclear whether certain other factors
such as long felt but unsolved needs and failure of others
apply in the design patent context. We leave to future

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cases the determination of whether considerations such as
long felt but unsolved need and failure of others will havesignificance to the obviousness inquiry in the design patentcontext. 4
6
We recognize that GM and several amici have raised
concerns as to the uncertainty that may result from overruling the Rosen-Durling test and applying a new test. GM
argues that eliminating the test will “revert to a rudderless
free-for-all [and] will increase confusion, disrupt settled expectations, and leave lower courts and factfinders without
the necessary guidelines to properly conduct the obviousness analysis.” Appellee’s Br. at 13. Along the same lines,
amici argue that “[e]liminating this framework now carries
great risk, including exposing up to 400,000 U.S[.] design
patents to substantial uncertainty [and] upsetting settledexpectations for applicants before the USPTO and the public at large.” Amicus Am. Intell. Prop. L. Ass’n Br. at 26;
see also Amicus Intell. Prop. Owners Ass’n Br. at 15 (“Elimination would leave USPTO examiners and design patent
owners without any analytical framework for evaluating
obviousness tailored to design patents.”).
We do not agree. The Graham four-part obviousness
test for utility patents has existed for a very long time andthere is considerable precedent from which the PTO andthe courts can draw when assessing obviousness in the design patent context. As the Supreme Court acknowledgedin Graham, there may well be some difficulties with this

It is possible that the rigid requirements of RosenDurling have, to date, prevented the development of a substantial body of caselaw considering the application of secondary considerations to obviousness analyses of design
patents.
4

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29fact-based non-rigid test, but these difficulties are not unusual:
This is not to say, however, that there will not bedifficulties in applying the nonobviousness test.
What is obvious is not a question upon which there
is likely to be uniformity of thought in every given
factual context. The difficulties, however, are comparable to those encountered daily by the courts insuch frames of reference as negligence and scienter, and should be amendable to a case-by-case development.
Graham, 383 U.S. at 18. This test has proven workable for
utility patents and we see no reason why it would not be
similarly workable for design patents. As with any change,
there may be some degree of uncertainty for at least a brief
period, but our elimination of the rigid Rosen-Durling test
is compelled by both the statute and Supreme Court precedent.
V
Turning to the merits of the specific case before us, wevacate the Board’s determination of nonobviousness of theD’625 patent. We remand for the Board to address in thefirst instance whether the D’625 patent would have beennonobvious under 35 U.S.C. § 103 based on Lian alone or
Lian as modified by Tucson, applying the framework forevaluating obviousness of design patent claims set forth in
this opinion.
As an alternative ground for holding the D’625 patent
nonobvious, the Board held that LKQ’s failure to identify“the correct visual impression created by the patented design as a whole” in its claim construction, “standing alone,justifies [the Board’s] conclusion that LKQ fails also toprove by a preponderance of the evidence that the challenged claim of the ’625 patent is unpatentable.” Board
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101 F.3d at 103). We have repeatedly held that tribunals“should not treat the process of claim construction [in design patent cases] as requiring a detailed verbal description of the claimed design, as would typically be true in thecase of utility patents.” Egyptian Goddess, 543 F.3d at 680;
see also Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294,
1302–03 (Fed. Cir. 2010) (stating that for design patents,“claim construction must be adapted to a pictorial setting”
and warning of “the dangers of reliance on a detailed verbal
claim construction”). Rather, the tribunal is not “obligatedto issue a detailed verbal description of the design” as “adesign is better represented by an illustration.” Egyptian
Goddess, 543 F.3d at 679. We reaffirm this principle andhold that the Board erred in rejecting LKQ’s asserted obviousness grounds on this basis.
CONCLUSION
As explained above, we reinstate the portion of thepanel opinion affirming the Board’s finding of no anticipation. We also vacate the Board’s nonobviousness determination and remand for further proceedings consistent withthis opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.

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United States Court of Appeals
for the Federal Circuit______________________LKQ CORPORATION, KEYSTONE AUTOMOTIVEINDUSTRIES, INC.,
Appellantsv.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee______________________
2021-2348______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR202000534.
______________________LOURIE, Circuit Judge, concurring in judgment.
I concur in the court’s decision to vacate and remand
the Board’s decision for it to reevaluate the validity of theclaimed design in light of the majority opinion.
I write separately because I do not agree that we need
to “overrule” In re Rosen, 673 F.2d 388 (CCPA 1982) andDurling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir.
1996). To the extent that KSR International Co. v. Teleflex
Inc., 550 U.S. 398 (2007) abjured what it called rigid tests
for evaluating patent issues, all we needed to do in this casewas to make the Rosen and Durling precedents less rigid.
Their use of “must” and “only” in their analyses are the only
signs of rigidity in those opinions. Replacing them with

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words such as “generally,” “usually,” or “typically” would
have sufficed. Otherwise, they were basically correct on
the law.
Rosen was decided by a Court of Customs and PatentAppeals (“CCPA”) panel that consisted in part of Judges
Markey, Rich, and Nies, a group that one might say knew
a bit about patent law, including the analysis of obviousness. And Durling, decided by an equally knowledgeable
panel of this court, merely cemented an already long-standing principle likewise established by the CCPA in In re Glavas, 230 F.2d 447, 450 (CCPA 1956). The basics of the
Rosen-Durling framework have therefore existed, and been
consistently applied to design patent validity, for decades
and long after Smith v. Whitman Saddle Co., 148 U.S. 674(1893).
Perhaps, in the fullness of time and in light of KSR, it
can be seen that Rosen and Durling may have used overly
strong language. But, “overruled”? It only needed to bemodified. Overruling is destabilizing. Courts should, if
possible, rule in modest steps, not abrupt acts of overruling. Even post-KSR, we did not wholly abandon the requirement that there be a motivation to combine simply
because the Supreme Court criticized one instance of its
application. And since KSR, we have continued to apply
tests and frameworks for validity. See, e.g., Graham v.
John Deere Co., 383 U.S. 1 (1965).
The majority walks away from Rosen and Durling as if
they violated basic tenets of patent law. In reality, all theyneeded was a bit of tinkering. It is important to note that
the U.S. Patent and Trademark Office, which also knows agood deal about evaluating design patents, basically endorsed Rosen and Durling, but found their applicationneeded a little more flexibility. Oral Arg. at 32:25–48(“We’re saying that the existing test is fine . . . . The RosenDurling test is fine, but we do recommend some changes toit.”).

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3

The substantial briefing by amici in this en banc appeal
was primarily dominated by entities with economic interest in the outcome of the case—supporters of automotive
manufacturers, automotive part replacement companies,
and insurance companies, each advocating for results andlegal concepts supporting their economic interests. That isfine, but we most benefit from entities without an economic
bias.
Broad-based organizations with a primary interest in
the stability and clarity of the law have told us that the
Rosen-Durling test is basically correct. They include theAmerican Intellectual Property Law Association, the Institute for Design Science and Public Policy, the International
Trademark Association, the Industrial Designers Society ofAmerica, and others, all of whom supported this precedent,
which the court now “overrules.” Am. Intellectual Prop.
Ass’n Amicus Br., ECF 136 at 31 (“[T]he Rosen-Durling
framework . . . allows for an expansive and flexible approach consistent with the principles of KSR” and “eliminating [it] would cause unnecessary uncertainty in an areaof design patent law that has worked reasonably well forover 40 years.”); Inst. for Design Sci. and Pub. Policy et al.
Amicus Br., ECF 144 at 37 (“Eliminating the Rosen-Durling test will unnecessarily harm design innovation.”); Indus. Designers Soc’y of Am. Amicus Br., ECF 193 at 5 (“[I]tis evident that this Court should uphold the existing RosenDurling framework.”); Int’l Trademark Ass’n Amicus Br.,ECF 201 at 12 (“The Rosen-Durling test sets the appropriate balance for determining the obviousness of a design,and the Court should not abandon it.”).
The essence of Rosen and Durling is that for obviousness, which generally assumes that one reference does not
anticipate the claimed design, one ought to have a basic
starting reference with “basically the same” “design characteristics” as the challenged design and a second one thatis “so related” as to result in a conclusion of obviousness.
Rosen, 673 F.2d at 391; Durling, 101 F.3d at 103 (citation

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omitted). What the majority is doing here is confirming
these concepts while overruling their cases of origin, just to
make minor modifications in their language.
Presumably, such a basic starting reference, just as
with utility patents, should be the closest prior art. The
majority uses that phrase only once, Maj. Op. at 23–24, but
it ought to be central, as it is with utility patents. It does
state that “a primary reference must be identified” and it“will likely be . . . the prior art design that is most visuallysimilar to the claimed design.” Id. But we did not need to“overrule” a case with language that a reference’s “design
characteristics” must be “basically the same” to substitute“most visually similar.” Those two phrases themselves arebasically the same or similar. 1 Maybe the word “must”
used in Rosen was excessive, but the thought expressed
was sound.
As the majority acknowledges, the primary reference
must fall within the range of what may be called analogous
art. Maj. Op. at 24 (“The primary reference will typicallybe in the same field of endeavor as the claimed ornamental
design’s article of manufacture, but it need not be, so long
“Basically the same” did not mean that a reference
and the challenged design must be near-identical or evensubstantially the same. Indeed, such an interpretation
would conflate anticipation and obviousness. See Gorham
Co. v. White, 81 U.S. 511, 528 (1871) (explaining that infringement, which has the same test as anticipation, Int’l
Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
1240 (Fed. Cir. 2009), considers whether or not the “twodesigns are substantially the same”). Rather, “basically”
meant “generally” or “roughly.” Moreover, Rosen did not
require that the primary reference be “basically the same”
as the claimed design, but only that the primary reference
have “design characteristics of which are basically the sameas the claimed design.” 673 F.2d at 391 (emphasis added).
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as it is analogous art.”). But the majority sets forth the test
for analogous art as part of the obviousness inquiry. See
Maj. Op. Sec. IV.1 (considering whether or not a referenceis analogous art as part of its Graham factor one analysis).
Properly understood, the analogous art test is not a test for
obviousness. It is a gateway. Determining whether art isanalogous is determining what may properly be consideredin an obviousness inquiry, not part of the test for what
would have been considered obvious. It is a threshold for
qualifying art, not an indicator of obviousness. E.g., In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference
qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.”). In my view, it should not be defined as a test forconsidering obviousness. That misconstrues its role in theanalysis.
Moving to the second step of the Rosen-Durling test, anexaminer or challenger might find another reference that,combined with the basic reference, might lead a skilled designer to what is claimed. That is where the “so-related”
language in Durling comes in. The additional reference, orreferences, in order to lead to obviousness, must be “so related” to the primary reference that “the appearance of certain ornamental features in one would suggest theapplication of those features to the other.” Durling,
101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575
(Fed. Cir. 1996) (quoting Glavas, 230 F.2d at 450)). Such areference or references would also be within the scope of
analogous art in order to be combinable with the basic reference. Again, perhaps the word “only” in Durling is excessive. But it just needed to be fine-tuned, not “overruled.”
And that is essentially what the majority did, merely swapping the “so related” language of Durling for “some recordsupported reason . . . that an ordinary designer . . . would
have modified the primary reference . . . .” Maj. Op. at 26.
Rosen and Durling therefore expressed the same concepts now adopted by the majority, albeit with a couple ofCase: 21-2348

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unnecessarily strong words. Such a basic analysis was
simply the way obviousness is examined and should be considered with design as well as with utility patents. Indeed,
the Rosen-Durling framework has already been long-regarded as the application of the relevant Graham factors
to design patents. See, e.g., Campbell Soup Co. v. Gamon
Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021); Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997).
With those thoughts, Rosen and Durling should havebeen allowed to stand, as modified, rather than been decisively overruled.
With that being said, I agree that the Board’s decision
should be vacated and remanded.