# In re SurgiSil: A Design Claim Is Tied to Its Article of Manufacture

> The Federal Circuit held a lip-implant design claim cannot be anticipated by a look-alike art tool, because design claims are limited to their article.

Topic: Patents  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/in-re-surgisil-article-of-manufacture-anticipation/


*In re SurgiSil, L.L.P.*, 14 F.4th 1380 (Fed. Cir. 2021), reoriented a fundamental question in design-patent law: what counts as prior art that can anticipate a design claim. Decided October 4, 2021, the Federal Circuit reversed a Patent and Trademark Office rejection and held that a design claim is limited to the article of manufacture named in the claim. A design that looks nearly identical but belongs to a different article, in this case an artist's blending stump versus a surgical lip implant, cannot anticipate the claim. The decision unsettled decades of examination practice that had treated design similarity across article boundaries as enough, and it strengthened the validity of design patents across the board.

## At a glance

- **Case:** *In re SurgiSil, L.L.P.*, 14 F.4th 1380 (Fed. Cir. 2021)
- **Decided:** October 4, 2021; U.S. Court of Appeals for the Federal Circuit; PTAB rejection reversed
- **Holding:** A design claim is limited to the article of manufacture identified in the claim and does not cover a design in the abstract; a prior-art reference disclosing a different article cannot anticipate the claim even if the designs look nearly identical.
- **Significance:** Narrows anticipating prior art to the same article of manufacture, a foundational rule for design-patent prosecution and litigation.

## The statutory frame: design patents and anticipation

A design patent under 35 U.S.C. § 171 protects a "new, original and ornamental design for an article of manufacture." The statutory language is precise on a point that is easy to overlook: the protected subject matter is a design *for an article*, not a design floating free of any object. Design and article are joined at the root of the grant.

Anticipation under 35 U.S.C. § 102 asks whether a single prior-art reference discloses the claimed invention. For utility patents the reference must disclose every claim limitation. For design patents the test, drawn from *Gorham Co. v. White*, 81 U.S. (14 Wall.) 511 (1871), asks whether an ordinary observer would find the prior-art design substantially the same as the claimed design. The question *SurgiSil* confronted was whether that ordinary-observer comparison is made design-to-design regardless of the article, or whether the article of manufacture is itself a limit on what can anticipate.

## The application and the rejection

SurgiSil sought a design patent on the ornamental design for a lip implant. The claimed design was, in visual terms, a smooth, elongated, tapered form. The examiner rejected the claim as anticipated under § 102 over a single prior-art reference: a Blick art-supply catalog depicting a "stump," a tightly rolled paper tool that artists use to blend and smooth charcoal or pastel on paper. The catalog stump and the claimed lip implant looked strikingly alike.

SurgiSil argued to the Patent Trial and Appeal Board that the stump could not anticipate because it was a "very different" article of manufacture than a lip implant. The Board rejected that argument. It reasoned that whether two designs are for different articles is irrelevant to anticipation, and that for purposes of the ordinary-observer comparison it was appropriate to ignore the identification of the article in the claim language. On that view, a design was a design, and the near-identical shapes were enough. SurgiSil appealed.

## The court's reasoning: the article limits the claim

The Federal Circuit reversed and did so on a narrow, textual ground. The court held that the Board's predicate legal conclusion, that the article of manufacture identified in the claim is irrelevant, was wrong. In the court's words, a design claim "is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract."

That principle followed directly from § 171 and from the nature of a design-patent claim, which claims the ornamental design as applied to the specific article shown and named. SurgiSil's claim was to a design for a lip implant. The Blick reference disclosed a design for an art tool. The parties did not dispute that a stump is a different article of manufacture than a lip implant. Because the reference was in a different article, it could not anticipate the claim, regardless of how similar the two shapes appeared to the eye. The court reversed the anticipation rejection.

The decision is notable for what it did not do. It did not weigh the degree of visual similarity or apply the ordinary-observer test to the shapes. It resolved the case one step earlier, at the threshold question of whether the reference was even eligible to anticipate. Once the articles differed, the visual comparison never began.

## What it changed: prior art bounded by the article

Before *SurgiSil*, the USPTO frequently rejected design claims over visually similar prior art drawn from unrelated fields, on the theory that appearance alone controlled. That was the Board's position in this very case: the identification of the article in the claim could be ignored, and whether a reference was analogous art was irrelevant to anticipation. *SurgiSil* cut that practice back, and the Manual of Patent Examining Procedure now quotes the decision's holding in its own guidance on design anticipation at § 1504.02. After the decision, a prior-art reference can anticipate a design claim only if it discloses the same article of manufacture. A look-alike from a different product category is not anticipatory.

The practical consequences run in two directions. For validity, the ruling is protective: it shrinks the pool of anticipating references and makes many design patents harder to invalidate on § 102 grounds. For claim drafting and infringement, it raises the stakes of how the article is identified. Because the article both narrows the prior art and, under the court's earlier decision in *Curver Luxembourg, SARL v. Home Expressions Inc.*, 938 F.3d 1334 (Fed. Cir. 2019), which *SurgiSil* relied on, can limit infringement scope, the words used to name the article in the title and claim carry real legal weight. *SurgiSil* and *Curver* function as bookends: *Curver* held that claim language identifying the article limits what infringes, and *SurgiSil* held that the same identification limits what anticipates.

## Open questions

*SurgiSil* drew a clean line for clearly different articles, a stump and a lip implant, but the harder cases involve articles that are related or overlapping. How different must two articles be before one cannot anticipate the other, and who decides whether a claimed "container" and a prior-art "cup" are the same article, remain open. The decision also leaves unresolved how it interacts with obviousness under § 103, where analogous-art principles differ from anticipation and where designers may still combine references. Whether *SurgiSil*'s article-of-manufacture limit will migrate fully into the obviousness analysis for designs is still being litigated. Finally, the ruling sharpens but does not fully settle how much specificity the article identification requires.

## Implications for inventors and businesses

- **Identify the article precisely.** The article named in a design claim now defines both the anticipating prior art and, under *Curver*, the infringement scope. Choose the article designation deliberately.
- **Expect stronger design-patent validity.** Look-alike references from unrelated product categories no longer anticipate. Design patents are more resistant to § 102 attacks after *SurgiSil*.
- **Do not over-narrow by accident.** A very specific article identification protects validity but can limit enforcement to that article. Consider the tradeoff between a narrow article that dodges prior art and a scope broad enough to catch real competitors.
- **Coordinate design and utility strategy.** Where a product's appearance and function both merit protection, align the design claim's article designation with the commercial product to maximize both validity and enforceable scope.

## Frequently asked questions

**What did In re SurgiSil decide about design patent scope?** The Federal Circuit held that a design claim is limited to the article of manufacture identified in the claim and does not cover a design in the abstract. Because SurgiSil claimed an ornamental design for a lip implant, the claim reached only lip implants, not every object that happens to share the shape.

**Why could an art tool not anticipate the lip-implant design?** The prior-art reference was a Blick catalog stump, an artist's tool for blending charcoal, that looked nearly identical to the claimed lip implant. Because anticipation requires a prior-art reference in the same article of manufacture, and a stump is a different article than a lip implant, it could not anticipate the claim under 35 U.S.C. Section 102.

**How does SurgiSil change design patent practice?** It narrows the universe of anticipating prior art to references in the same article of manufacture, strengthening validity for many design patents. It also sharpens the importance of how the article is identified in the claim and title, since that identification now defines both infringement scope and the relevant prior art.

## Authorities and sources

- *In re SurgiSil, L.L.P.*, 14 F.4th 1380 (Fed. Cir. 2021), opinion text at [Federal Circuit opinion PDF](https://www.cafc.uscourts.gov/opinions-orders/20-1940.opinion.10-4-2021_1843781.pdf).
- Sterne Kessler analysis of *In re SurgiSil*, [sternekessler.com](https://www.sternekessler.com/news-insights/insights/re-surgisil-14-f4th-1380-fed-cir-2021/).
- Finnegan, "SurgiSil: Lip Implant Case Shows Looks Can Be Deceiving," [finnegan.com](https://www.finnegan.com/en/insights/articles/surgisil-lip-implant-case-shows-looks-can-be-deceiving.html).
- 35 U.S.C. § 171, design patents, [Cornell LII](https://www.law.cornell.edu/uscode/text/35/171).
- *Gorham Co. v. White*, 81 U.S. (14 Wall.) 511 (1871), the ordinary-observer test, [Cornell LII](https://www.law.cornell.edu/supremecourt/text/81/511).
- *Curver Luxembourg, SARL v. Home Expressions Inc.*, 938 F.3d 1334 (Fed. Cir. 2019), the companion scope decision, [Federal Circuit opinion PDF](https://www.cafc.uscourts.gov/opinions-orders/18-2214.opinion.9-12-2019.pdf).