`
`
`
`Case: 20-1940
`
`Document:42
`
`Page:1_
`
`Filed: 10/04/2021
`
`GAnited States Court of Appeals
`for the Federal Circuit
`
`IN RE: SURGISIL, L.L.P., PETER RAPHAEL,
`SCOTT HARRIS,
`Appellants
`
`2020-1940
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 29/491,550.
`
`
`Decided: October 4, 2021
`
`
`ANGELA OLIVER, Haynes & Boone, LLP, Washington,
`DC, argued for appellants SurgiSil, L.L.P., Peter Raphael,
`Scott Harris. Also represented by JOHN RUSSELL EMERSON,
`ALAN N. HERDA, DEBRA JANECE MCCOMAS, VERA L.
`SUAREZ, Dallas, TX.
`
`MaryL. KELLY, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`appellee Andrew Hirshfeld. Also represented by THOMAS
`W. KRAUSE, WILLIAM LAMARCA, AMY J. NELSON, FARHEENA
`YASMEEN RASHEED.
`
`
`Before MOORE, Chief Judge, NEWMAN and O’MALLEY,
`Circuit Judges.
`
`Moore, Chief Judge.
`
`
`
`
`
`Case: 20-1940 Page:2_Filed: 10/04/2021Document:42
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`
`
`2
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`IN RE: SURGISIL, L.L.P.
`
`SurgiSil appeals a decision of the Patent Trial and Ap-
`peal Board affirming an examiner’s rejection of SurgiSil’s
`design patent application, No. 29/491,550. Because the
`Board erred in holding that the claimed designis not lim-
`ited to the particular article of manufacture identified in
`the claim, we reverse.
`
`I
`
`The ’550 application claims an “ornamental design for
`a lip implant as shown and described.” J.A. 19. The appl-
`cation’s only figure is shownbelow:
`
`
`
`J.A. 20.
`
`The examinerrejected the sole claim of the 550 appli-
`cation as anticipated by a Dick Blick catalog (Blick). J.A.
`82-84. Blick discloses an art tool called a stump. J.A. 182.
`Blick’s stump is made of “tightly spiral-wound, soft gray
`paper” andis used “for smoothing and blending large areas
`of pastel or charcoal.” Jd. An image of Blick’s stump is
`shownbelow:
`
`
`
`Id.
`
`The Board affirmed, finding that the differences in
`shape between the claimed design and Blick are minor.
`J.A. 2-5. It rejected SurgiSil’s argument that Blick could
`not anticipate because it disclosed a “very different” article
`of manufacture than a lip implant. J.A.5. The Board rea-
`soned that “it is appropriate to ignore the identification of
`the article of manufacture in the claim language.” J.A. 7.
`It further explained that “whether a reference is analogous
`art is irrelevant to whether that reference anticipates.” Id.
`
`
`
`
`
`Case: 20-1940 Page:3_Filed: 10/04/2021Document:42
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`
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`IN RE: SURGISIL, L.L.P.
`
`3
`
`(quoting In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
`1997)). SurgiSil appeals. We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(A).
`
`II
`
`Although anticipation is ultimately a question of fact,
`the Board’s predicate decision that the article of manufac-
`ture identified in the claim is not limiting was a legal con-
`clusion. We review the Board’s legal conclusions de novo.
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d
`435, 449 (Fed. Cir. 2015) (citing Rambus Inc. v. Rea, 731
`F.3d 1248, 1251 (Fed. Cir. 2013)). We hold that the Board
`
`erred as a matter of law
`
`Here, the claim identifies a lip implant. The claim lan-
`guage recites “a lip implant,” J.A. 19, and the Board found
`that the application’s figure depicts a lip implant, J.A. 7.
`As such, the claim is limited to lip implants and does not
`cover other articles of manufacture. There is no dispute
`
`
`
`
`
`Case: 20-1940 Page:4_Filed: 10/04/2021Document:42
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`
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`4
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`IN RE: SURGISIL, L.L.P.
`
`that Blick discloses an art tool rather than a lip implant.
`The Board’s anticipation findingtherefore rests on an erro-
`neous interpretation of the claim’s scope.
`
`Il
`
`Wehave considered the cases cited by the Director, and
`they do not support the Director’s position. Because the
`Boarderred in holding that the claimed designis not lim-
`ited to lip implants, we reverse.
`
`REVERSED
`
`COSTS
`
`Costs to SurgiSil.
`
`
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