To find the anticipation of a design patent, the same design must be found in a single piece of prior art, from the viewpoint of the ordinary observer. That is, a design is considered novel, when the ordinary observer must find that the overall appearance of the design at issue is different from any single prior art design. Unlike the utility patents, the structure or function of the article is not considered; and the novelty is determined based on the article’s external shape and/or surface ornamentation.
Anticipation and Obviousness in Design Patents
The design is not novel if a single prior art reference shows a substantially identical design. Just like the prosecution of the utility patent, prior art references cannot be combined to determine the question of novelty. This novelty test for the design patent requires comparison of two designs (the claimed design in question and the design provided by the prior-art) from the viewpoint of the ordinary observer to determine whether a patented design as a whole is substantially the same as the design as presented by the cited prior-art document alone.
Similarly, in an obviousness test for a design patent, it is first determined whether, in the primary cited reference, the design characteristics are basically the same as the claimed design. In general, the primary cited reference is determined if that reference creates a same visual impression to an ordinary observer as the claimed design. It may boil down to whether the claimed design would have been obvious to a designer of ordinary skill who designs similar types of articles. In some case, an additional prior-art document may be combined with the primary cited reference only if the designs are so related that the appearance of certain ornamental features in one design suggests the application of those features to the other.