1. “Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?”
2. “Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting ‘a rigid rule that limits the obviousness inquiry,’ 550 U.S. at 419, and adopting ‘an expansive and flexible approach,’ id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that ‘[b]efore one can begin to combine prior art designs . . . one must find a single reference, “a something in existence, the design characteristics of which are basically the same as the claimed design,”‘ 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s requirement that secondary references ‘may only be used to modify the primary reference if they are “so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other,”‘ id. at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).”
3. “If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?”
4. “Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.”
5. “Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?”
6. “To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?”
“The principal question that this case presents is whether Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), should cause us to rethink the long-standing Rosen-Durling test used to assess nonobviousness of design patents. We answer in the affirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. We adopt an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness.”
