In re Webb

In re Webb

Opinion

 [***1433]  [*1555]   CLEVENGER, Circuit Judge

This is an appeal from a decision of the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ("Board") affirming the final rejection of the sole claim of appellants' ("Webb") U.S. Design Patent Application Serial No. 833,470. The claim for "the ornamental design for a grooved femoral hip stem prosthesis as shown and described," was "rejected as being unpatentable under 35 U.S.C. § 171 as being directed to non-statutory subject matter." The design can be appreciated from Figure 2 of the application reproduced below.  [***1434]  

The Board affirmed [**2]  the Examiner's holding that the design, "clearly not intended to be visible in actual use," "is not proper subject matter under 35 U.S.C. § 171." The Board's decision creates a per se rule that a design for an article which will not be visible in the final use for which the article was created is non-statutory subject matter even if the design is observed at some stage of the article's commercial life. We reverse and remand.

Hip stem prostheses of the design invented by Webb are metallic implants that are generally used by orthopedic surgeons to supplant the functioning of a diseased or broken femur, near the hip, where the femur is joined to the pelvis. According to Webb, and not disputed by the Patent and Trademark Office ("PTO"), surgeons are made aware of differing brands and types of prostheses through advertisements in professional journals and through trade shows, where the prostheses themselves are displayed. Advertisements that were put in the record prominently and visually display the features of the prostheses. Furthermore, the applicant's agent submitted that "an implant's appearance is observed by potential [**3]  and actual purchasers, surgeons, nurses, operating room staff, and other hospital personnel." After purchase, the prosthesis is surgically implanted into a patient's body where the  [*1556]  implant is to remain indefinitely. Neither party disputes that, after implantation, the prosthesis is no longer visible to the naked eye.

In the Initial Office Action, the Examiner rejected the claim "under 35 U.S.C. 171 for the reason that the instant article is believed to be devoid of ornamentality, as comprehended by the statute. Articles of this type are not only completely hidden in use, but are devised to satisfy purely structural and mechanical requirements as well." The Examiner thus found the article to be unpatentable subject matter for two reasons: because it was purely functional and because it was concealed in normal use. In reply, Webb argued that the design was not purely functional since a "prosthetic implant could utilize the mechanical/utilitarian features/concepts . . . and have a totally different visual appearance." Webb also argued that the "visual appearance can certainly draw attention to a particular implant at a trade show or in advertising"  [**4]  and, therefore, the design was visible during normal use.

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