In re Webb
916 F.2d 1553 (1996)
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Rule of Law:
An ornamental design for an article may be eligible for a design patent even if the article is hidden from view in its final intended use, so long as its appearance is a matter of concern at some point during its commercial life, such as during sale or display.
Facts:
- Webb designed a grooved femoral hip stem prosthesis, a metallic medical implant.
- This type of prosthesis is surgically implanted into a patient's femur, where it remains for the rest of its functional life.
- Once implanted, the prosthesis is completely hidden from view to the naked eye.
- Prior to implantation, the design of the prosthesis is visible to its purchasers, primarily surgeons and hospital staff.
- Surgeons become aware of and select different types of prostheses through advertisements in professional journals and displays at trade shows where the articles are prominently featured.
- The visual appearance of the implant is therefore observed by potential and actual purchasers during the marketing and sales process.
Procedural Posture:
- Webb filed U.S. Design Patent Application Serial No. 833,470 for an ornamental design for a grooved femoral hip stem prosthesis.
- A patent examiner issued a final rejection of the claim under 35 U.S.C. § 171, reasoning that articles hidden in their normal use are not proper subject matter for design patents.
- Webb appealed the examiner's final rejection to the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ('Board').
- The Board affirmed the examiner's rejection, holding that the design was non-statutory subject matter because the prosthesis is not visible in its normal and intended use, which it defined as its post-implantation function.
- Webb, as the appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Is an ornamental design for an article that is hidden from view in its final intended use, but is visible during other parts of its commercial life, eligible for a design patent under 35 U.S.C. § 171?
Opinions:
Majority - Clevenger, J.
Yes. An ornamental design for an article is eligible for a design patent if its appearance is a matter of concern at some point in its commercial life, even if the article is concealed in its final intended use. The court rejected the Board's per se rule that an article's design is unpatentable if it is not visible in its final use. The court reasoned that the 'normal and intended use' of an article is not limited to its ultimate function but encompasses its entire commercial lifespan, from the completion of manufacturing to its ultimate destruction. This includes periods of sale and display, during which the ornamental appearance of an article can be a 'matter of concern' and enhance its salable value, as established in Gorham Co. v. White. Because Webb provided evidence that the prosthesis's design was displayed in advertisements and at trade shows to attract surgeon-purchasers, its ornamentality is a matter of concern during its commercial life, making it eligible for design patent protection.
Analysis:
This decision significantly broadens the scope of design patent eligibility by rejecting a rigid, final-use-only test for ornamentality. It clarifies that 'normal and intended use' encompasses the entire commercial lifecycle of a product, including marketing and sales. This precedent is crucial for protecting designs of products that are hidden in their end-use, such as internal medical devices, replacement parts, and components inside larger machines. The ruling shifts the inquiry from a simple visibility test to a more nuanced, fact-based analysis of whether a design's appearance is a 'matter of concern' at any commercially relevant point.
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