Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the center of their never-ending patent battle with Samsung. The patent in question – U.S. Design Patent D618,677 – covers the appearance of the surface of an electronic device.

Many of the news accounts incorrectly state that the Apple design patent has been invalidated. A non-final rejection is just that – not final. Apple will have an opportunity to respond to this USPTO action. If Apple is not successful in convincing the patent examiner to change his mind they will be able to appeal the decision to the United States Court of Appeals for the Federal Circuit. Thus, this matter is a long way from over. Having said that, Florian Mueller (who not surprisingly writes an excellent article on the topic) thinks the odds are long that Apple will be able to overcome this rejection.

One new problem Apple now faces with respect to the ‘677 design patent is that the patent examiner has determined that the priority claim made in the patent “must be canceled.”

A priority claim is made in a patent application to a previous filing that has a disclosure that supports the invention being claimed in the present application. In this situation, the ‘677 design patent application was filed on November 18, 2008, but priority was claimed to prior filed design patent applications. More specifically, the ‘677 design patent was filed as a division of Application No. 29/282,2834, which was filed on July 30, 2007, which was itself filed as a continuation of Application No. 29/270,888, which was filed on January 5, 2007. Thus, when design patent ‘677 was initially examined it was viewed as having priority back to the January 5, 2007 filing date of the first application in the chain.

The patent examiner in the reexamination explained:

The patent owner is advised that the design in this patent is not described in the originally filed disclosure of earlier applications, 29/282834 or 29/270999. The design in this patent is different from that of the earlier applications in that the new claim includes a front surface entirely covered with a translucent black surface without color contrast and excludes the surface within the round home button while including the entire capsule-shaped speaker opening. Therefore the claim in this patent does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, needed to claim benefit under 35 U.S.C. 120. When a design is changed, the result is a new and different design; the original design remains just what it was.

Without the ability to claim priority back to January 5, 2007, two other Apple design patents – U.S. Design Patent D602,014 (filed August 31, 2007) and U.S. Design patent D618,204 (filed June 27, 2007) – were prior art. These two references qualify as prior art as of the date they were filed under pre-AIA 35 U.S.C. 102(e), and were used to support one of three separate obviousness rejections. The ‘204 design patent was also used to support a pre-AIA 102(e) rejection based on the fact that the appearance of the planar front surface of the ‘204 design patent is substantially the same as that of the patented design.

In the first obviousness rejection the examiner used U.S. Design Patent D546,313 in view of either WO 2006/038499 or Japanese Patent JPD1235888. The examiner concluded that although the invention is not identically disclosed in the prior art the difference between what is claimed in the ‘677 design patent and the prior art would have been obvious to one of skill in the art a the time the invention was made. More specifically, the examiner explained that it would have been obvious to expand the size of the display.

In the second obviousness rejection the examiner used Japanese Patent JPD1204221 as the primary reference. The examiner explained that this prior art provided a planar front surface, which included an elongated feature at the top and bottom of the screen. The difference between this prior art and the claim in the ‘677 design patent are that the ‘677 design patent has a display that is narrower and the feature at the bottom is circular rather than elongated. The examiner concluded that it would have been obvious to a designer of ordinary skill to make these changes in light of the other cited prior art.

Thus, even if Apple is ultimately able to establish that they are indeed entitled to January 5, 2007 as a priority date there will be hurdles they must overcome.