United States Court of Appeals 

for the Federal Circuit ______________________ 

LKQ CORPORATION, KEYSTONE AUTOMOTIVE 

INDUSTRIES, INC.,

Appellants

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee

______________________ 

2021-2348

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2020-

00534.

______________________ 

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, BRIAN 

RACILLA; BRIAN JAMES SPRINGER, Civil Division, United 

States 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 DUNSTAN 

BARNES; 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 GLENDON 

HEPNER, 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 and 

Dorr 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, United 

States 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 JAMES 

PAK, 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 DAVID 

GOLDBERG; 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, in 

which Chief Judge MOORE and Circuit Judges DYK,

PROST, REYNA, TARANTO, CHEN, HUGHES, and STARK join.

1 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 is 

whether 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 to 

assess nonobviousness of design patents. We answer in the 

affirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically the 

same” 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 those 

features 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 the 

design of the front fender on the 2010 Hyundai Tucson

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(“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 the 

eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the 

same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the 

other, 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 that 

while “there are certain articulable and visible similarities 

in the overall appearance of the claimed design and Lian 

that would be apparent to an ordinary observer,” differences between the designs, including (1) the wheel arch 

shape 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, the 

design 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 the 

patented 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 improper 

to invalidate a design patent on grounds of obviousness.”).

At step two, Durling requires that “[o]nce this primary 

reference 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 another 

threshold must be met. Specifically, any secondary references must be “so related [to the primary reference] that 

the appearance of certain ornamental features in one 

would suggest the application of those features to the 

other.” 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 to

establish 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 the 

same differences it emphasized with regard to anticipation, 

the Board found that Lian differs from the claimed design 

in “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, and 

the 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 the 

Board 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 Lian 

and 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 the 

Board was “sufficient to preserve the argument” and that 

“this challenge to Rosen and Durling is a pure question of 

law that undoubtedly presents a significant question of 

general impact, favoring the exercise of our discretion to 

hear and decide this issue.” Id. at *4–6. On the merits, the 

panel 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,’” and 

that “LKQ failed to show that Lian creates ‘basically the 

same’ 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 Rosen

or 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 Rosen

reference 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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§ 103 . . . does not differentiate . . . [and] applies to all types 

of 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 the 

panel opinion. See LKQ Corp. v. GM Glob. Tech. Operations LLC, 71 F.4th 1383, 1384 (Fed. Cir. 2023). Among 

other questions, our order requested briefing 

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.

DISCUSSION

I 

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 a 

design or utility patent claim should start with the statutory language of § 103, which states in pertinent part: 

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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 to 

a 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 and 

the claims at issue”; and “the level of ordinary skill in the 

pertinent 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 to 

give 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 that 

the claimed invention as a whole would have been obvious 

to a person of ordinary skill in the pertinent art at the time 

of the invention. 

More recently, the Supreme Court again addressed the 

standards 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 

would have been motivated to modify the first prior 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 hindsight 

bias 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 the 

TSM 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 in 

ways other than meeting the TSM test as rigidly applied. 

The Court noted, for example, that design incentives and 

market forces could be a reason to apply an invention from 

one field into another, and that a patent claim might be 

proved 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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II

The Supreme Court has also addressed the validity of 

design 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 patentable 

in 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] for 

the low, broad cantle of the Granger tree. In other 

words, the front half of the Granger and the rear 

half of the Jenifer, or Jenifer-McClellan, make up 

the saddle in question, though it differs also from 

the 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 a 

drop than the Granger saddle had.

Id. In this way, the Supreme Court explained that the 

claimed 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 were 

several 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 

2 At the time, patent law did not speak of obviousness. The Whitman Saddle Court addressed the matter by 

reference to “the inventive faculty.” 148 U.S. at 679. The 

reasoning of Whitman Saddle carries over to the modern 

§ 103 standard of obviousness.

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the taste and fancy of the purchaser.” Id. at 681. Addressing the combination of the Granger and Jenifer saddles, the 

Court 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 and 

manner ordinarily done,” and that “the addition of a known 

cantle to a known saddle, in view of the fact that such use 

of 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 the 

pommel of the Granger saddle, namely, the drop at the rear 

of the pommel.” Id. The Court withheld judgment on the 

validity 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 as 

such, no infringement could occur. Id. at 682.

In short, the Court considered the prior art in the field 

of the article of manufacture, the knowledge of an ordinary 

saddler, and the differences between the prior art and the 

claimed design, and concluded that combining the two 

known saddle designs was nothing more than an “exercise 

of 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 framework 

and threshold rigidity. Rosen-Durling is out of keeping 

with the Supreme Court’s general articulation of the 

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principles underlying obviousness, as well as its specific 

treatment 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 not 

bind this court sitting en banc. See South Corp. v. United 

States, 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 even 

when 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 the 

same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that 

features 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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1 

Design 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 to 

patents 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 “basically 

the same” as the claimed design—and abruptly ending the 

analysis 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 design 

of the prior art Granger saddle was “basically the same” as 

the 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 the 

claimed 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 make 

such combinations. Id. at 681. This analysis reflects the 

reality that the one-size-fits all approach of Rosen—in 

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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, “when 

a court transforms [a] general principle into a rigid rule

that 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 secondary 

reference(s) are “so related to the primary reference that 

the appearance of certain ornamental features in one 

would suggest the application of those features to the 

other.” 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 

inquiry into whether those differences would have been 

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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, the 

Durling “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 a 

saddler to combine the front half of Granger with the cantle 

of Jenifer because record evidence established that “it was 

customary for saddlers to vary the shape and appearance 

of saddletrees in numerous ways, according to the taste 

and fancy of the purchaser” and “the Jenifer cantle was 

used upon a variety of saddles.” Id. at 681. The Court reasoned that, based on this evidence, “[n]othing more was 

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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 and manner ordinarily done.” Id. Continuing, the 

Court explained the “addition of a known cantle to a known 

saddle,” was not inventive “in view of the fact that such use 

of 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 patent

claims should be. We are guided by the language of § 103, 

as well as the Supreme Court’s and our court’s precedent 

on 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 agree 

with 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 the 

knowledge 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 “basically 

the same” requirement to qualify as prior art. Rather, an 

analogous 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 in 

that 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 of 

elements from non-analogous sources, in a manner that reconstructs the applicant’s invention only with the benefit 

3 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 well 

established 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 of 

obviousness.”).

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 on 

other secondary references—patents relating to bottles, a 

razor blade sharpener, and a bar of soap. On appeal, the 

court grappled with whether the analogous art requirement for utility patents applies to obviousness of design patents. Ultimately, the court concluded that “[t]he principle 

of 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 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.” Id. In applying the “so related” test, 

the court addressed the analogous art issue by noting that 

while 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 

where we abandon it today. But there is no basis for 

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abandoning the underlying analogous art requirement for 

assessing 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 the 

same 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 a 

person of ordinary skill would look to such articles for their 

designs.” 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 not 

clearly 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 no 

written description or written claims to define their scope; 

the invention is defined by the overall visual impression 

that the drawings convey. See Egyptian Goddess, Inc. 

v. Swisa Inc., 543 F.3d 665, 679–80 (Fed. Cir. 2008) (en 

banc) (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. Prior

art designs for the same field of endeavor as the article of 

manufacture will be analogous, and we do not foreclose 

that other art could also be analogous. Whether a prior art 

design is analogous to the claimed design for an article of 

manufacture 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 hindsight 

because “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 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 Jennings, 182 F.2d 207, 208 (CCPA 

1950). The primary reference will likely be the closest prior 

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art, i.e., the prior art design that is most visually similar to 

the claimed design. The more visually similar the primary 

reference 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 of

manufacture, 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 a 

threshold “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 of 

design . . . 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 the 

claimed 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 [prior 

art] and appellant’s design had little or no effect on the 

overall appearance of the design”); Dobson v. Dornan, 

118 U.S. 10, 15 (1886) (“Undoubtedly, the claim in this case 

covers the design as a whole, and not any part of it as a 

part, 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 the 

art to which the claimed invention pertains.” 35 U.S.C. 

§ 103.

In the design patent context, we have interpreted “a 

person 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 designer 

of 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 

Saddle, 148 U.S. at 681 (determining patentability from 

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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 the 

prior art, and the differences between the prior art and the 

claimed design, the obviousness or nonobviousness of the 

claimed design is evaluated. We have previously described 

this inquiry as whether an ordinary designer in the field to 

which 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); see 

also 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 the 

claimed 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 both 

be analogous art to the patented design. Consistent with 

KSR, the motivation to combine these references need not 

come 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 with 

the feature(s) from the secondary reference(s) to create the

same overall appearance as the claimed design. See Campbell Soup, 10 F.4th at 1275 (discussing the question of 

whether “an ordinary designer would have modified the 

primary 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 to 

consider 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 area 

of motivation to combine, the problem to be solved may 

have less relevance in the design patent context than in the 

utility patent context. Of course, it follows that the more 

different the overall appearances of the primary reference 

versus the secondary reference(s), the more work a patent 

challenger 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 of 

hindsight. 

5 

Consistent with Graham, the obviousness inquiry for 

design 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 as 

commercial success, long felt but unsolved needs, failure of 

others, 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 of 

design 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 in 

design 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 have 

significance to the obviousness inquiry in the design patent 

context.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 settled 

expectations 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 and 

there is considerable precedent from which the PTO and 

the courts can draw when assessing obviousness in the design patent context. As the Supreme Court acknowledged 

in Graham, there may well be some difficulties with this 

4 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.

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fact-based non-rigid test, but these difficulties are not unusual: 

This is not to say, however, that there will not be 

difficulties 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 in 

such 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, we 

vacate the Board’s determination of nonobviousness of the 

D’625 patent. We remand for the Board to address in the 

first instance whether the D’625 patent would have been 

nonobvious under 35 U.S.C. § 103 based on Lian alone or 

Lian as modified by Tucson, applying the framework for 

evaluating 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 to 

prove by a preponderance of the evidence that the challenged claim of the ’625 patent is unpatentable.” Board 

Decision, 2021 WL 3411458, at *17 (quoting Durling, 

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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 the 

case 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 “obligated 

to issue a detailed verbal description of the design” as “a 

design is better represented by an illustration.” Egyptian 

Goddess, 543 F.3d at 679. We reaffirm this principle and 

hold that the Board erred in rejecting LKQ’s asserted obviousness grounds on this basis.

CONCLUSION

As explained above, we reinstate the portion of the 

panel opinion affirming the Board’s finding of no anticipation. We also vacate the Board’s nonobviousness determination and remand for further proceedings consistent with 

this 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 AUTOMOTIVE 

INDUSTRIES, INC.,

Appellants

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee

______________________ 

2021-2348

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2020-

00534.

______________________ 

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 the 

claimed 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) and 

Durling 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 case 

was 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 Patent 

Appeals (“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 be 

modified. 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 they 

needed was a bit of tinkering. It is important to note that 

the U.S. Patent and Trademark Office, which also knows a 

good deal about evaluating design patents, basically endorsed Rosen and Durling, but found their application 

needed 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 to 

it.”). 

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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 and 

legal concepts supporting their economic interests. That is 

fine, 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 the 

American Intellectual Property Law Association, the Institute for Design Science and Public Policy, the International 

Trademark Association, the Industrial Designers Society of 

America, 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 area 

of design patent law that has worked reasonably well for 

over 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]t 

is 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 that 

is “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 visually 

similar 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 are 

basically 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 typically 

be in the same field of endeavor as the claimed ornamental 

design’s article of manufacture, but it need not be, so long 

1 “Basically the same” did not mean that a reference 

and the challenged design must be near-identical or even 

substantially 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 “two 

designs 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 same 

as 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 reference 

is 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 is 

analogous is determining what may properly be considered 

in 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 for 

considering obviousness. That misconstrues its role in the 

analysis.

Moving to the second step of the Rosen-Durling test, an 

examiner 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, or 

references, 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 the 

application 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 a 

reference 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 

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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 have 

been 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. 

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