How to Reverse a 103 Obviousness Rejection in a Design Patent Case

MARK TERRY, ESQ.

The article examines Ex parte Kellerman, where the Board reversed an examiner’s obviousness rejection of a design patent application for a serving tray resembling a ceramic cooking pan.

A central distinction was the shape of an opening in the handle. The claimed design used an almond-shaped opening, while the cited prior art showed an oval opening. The examiner treated the difference as minor, but the Board found that the prior art would require further modification to reach the claimed ornamental appearance.

Because the required modification was not shown to be obvious, the Board reversed the rejection. The decision illustrates that seemingly small visual differences can be legally significant when they affect the overall ornamental design.

Applicants responding to a design-patent obviousness rejection should explain why each visual distinction matters and challenge any unsupported assertion that the prior art could simply be modified to match the claimed design. Evidence, including a declaration under 37 C.F.R. §1.132, may reinforce that argument.