Mr. IP Law

While design patents can serve as prior art in utility applications, their lack of technical disclosure can limit their effectiveness in supporting obviousness rejections. When facing a rejection based on a design patent, look closely at the examiner’s reasoning—especially whether the modification is allegedly motivated by unsupported functionality or just aesthetics.

Official notice can be a useful tool for examiners, but its scope is intentionally limited. Know the limits to ensure that officially noticed facts cannot undergird a rejection on their own.

Read about a recent PTAB decision where the board recognizes that an applicant is explaining the technical benefits of an invention, not trying to limit claims to a particular advantage not expressly recited.