The purpose of a prior art design is considered in determining whether the reference is a proper primary reference for a design patent obviousness challenge.

Federal Circuit disagreed with findings by the Patent Trial and Appeal Board (PTAB) that a prior art reference (Linz) was not a proper primary reference for the challenged design patent claims. The design patent claim related to a gravity feed dispenser for a cylindrical object, such as a can.

The court stated the test for determining whether a reference is a proper primary reference for a design patent obviousness challenge: “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” The PTAB had found that Linz did not disclose a cylindrical object and adding a “hypothetical can to Linz” is improper because the “comparison does not consider the design ‘in existence’ and the modification has a noticeable impact on the overall design.” The Federal Circuit disagreed, noting that there is no dispute that Linz’s design is for dispensing cans and as such, “the ever-so-slight differences in design, in light of the overall similarities, do not properly lead to the result that Linz is not “a single reference that creates ‘basically the same’ visual impression” as the claimed designs.” The Federal Circuit did affirm the PTAB, however, for a second prior art reference, Samways, whose design differed from the challenged claim, inter alia, by including a dual dispensing area design.

Judge Newman dissented, faulting the majority of “judicial insert[ing] the missing cylindrical object” into the Linz design simply because the purpose of the Linz design is to hold cylindrical objects. In Judge Newman’s view, the proper analysis is to first determine whether a proper primary reference is available before considering whether a reference’s design may be modified.