It is not often fashion, the Kardashians, design patents, and the PTAB all come together, so when it does you have to pay attention.
Today we review a recent PTAB decision on a design for an undergarment, where none other than Kim Kardashian West is one of the named inventors. Lest you think this is a joke, from the file wrapper:
The case is 29/694,603 and is interesting not just for the pop culture aspects, but rather for design patent prosecution strategy. The application relates to a design for “a Short Garment”. Fig. 1 from Kim’s application is reproduced below:
Skims Design Application
The examiner rejected the application as anticipated by a design shown in an old utility patent (US 3,547,128). However, the issue was that the examiner cited just part of the prior art garment, which was a pair of overlapping stocking units. FIG. 1 from the prior art shows the combined system where each unit of the hose extend down the whole leg, whereas FIG. 7 from the prior art shows just part of one of the units (with the lower leg part cut off).
Prior art
Kim’s counsel fought back and ultimately appealed to the PTAB. They argued that it is improper for the Examiner to compare the claimed design for an entire article with the fragment of the prior art’s design in FIG. 7. Support for this argument was based on the logic that the examiner was extracting only so much of the prior art’s design as supported the rejection, while ignoring the remainder of the disclosed design - thus not considering the reference as a whole. Kim’s counsel noted the claimed design was for the whole garment, and tied the issue back to the ordinary observer test as follows:
[b]y ignoring the full stocking unit disclosed in [the prior art], the Examiner is not only ignoring the ordinary observer test as the ordinary observer would view the [prior art] stocking unit as a whole, but is also ignoring what [the prior art] suggests as a whole to one of ordinary skill in the art.”
The PTAB found the examiner erred (internal citations omitted):
The “ordinary observer” test is used to determine anticipation, and the ordinary observer test considers the designs as a whole. While relying on less than the entire prior art article may be appropriate when an applicant has chosen to claim only a portion of the article of manufacture in which its design is embodied, Appellant here is claiming the entire article of manufacture. Thus, it is appropriate to compare Appellant’s claim design with an entire prior art article of manufacture.
We decline to consider the fragmentary view of [the prior art’s] Figure 7 in a vacuum. [The prior art’s] written description describes its Figure 7 as “a fragmentary, front view of the right stocking unit.” [The prior art] also discloses that its stocking units 10, 10a are “worn over bare skin from the waist to the feet.”
While the appearance of [the prior art’s] Figure 7 is at least similar to the appearance of the claimed design, [the prior art’s] Figure 7 is not, itself a design for an article of manufacture. Rather, it is only a fragmentary view of a design for an article of manufacture. Thus, the Examiner’s rejection does not compare two designs for articles of manufacture (or two portions of a design for an article of manufacture). A skilled artisan, considering [the prior art’s] right stocking unit 110a as a whole, would understand that its design includes a hose section 114a that extends all the way to the feet. It is this prior art design that must be compared with Appellant’s claim to the entire article of manufacture. We are not persuaded that a designer would be motivated by the fragmentary view of [the prior art’s] hose shown in its Figure 7 to create a design based thereon
So, if the examiner cites just a portion of a prior art product against the ornamental design for the product as a whole, remember Kim’s skims and push back.