In re Carlson, 983 F.2d 1032 (1992) Notes

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United States Court of Appeals Federal Circuit.

PTO examiner, and PTO Appeals Board, said unpatentable under 103 (nonobviousness)

Affirmed by this US court of Appeals

Geschmacksmuster - German IP, industrial design rights (shape, pattern, color for non-utilitarian purposes) [1]

2 issues:

  • Gmaster a foreign invention under 102a and therefore prior art?
  • this patent obvious given prior art under 103?

Patent: [2]

  • fluid hydration system, stores water, replacement reservoir

Carlson accused Revlon, Smiletote of infringing

Gmuster - design registration:

  • bring it to local courthouse
  • Federal gazette publishes list with general description, name and location of registrant, city location
  • copies available

after reexamination, find Gmuster is prior art under 102a, thus his patent is obvious

  • patent issued <12 mos. b4 patent app, 102b not applicable

Board affirmed, now appeals to this court

a person is entitled to a patent under U.S. law unless the same invention was patented by another person in a foreign country prior to the invention thereof by the U.S. applicant. 35 U.S.C. § 102(a)

A further bar to patentability arises if an applicant for a U.S. patent has been granted a patent in a foreign country on the same invention more than twelve months prior to the date the patent application is filed in the United States. 35 U.S.C. § 102(d)

With respect to design patents, however, Congress has provided that the time bar in section 102(d) is six months.

Predecessor Court:

With regard to construing “patented ... in a foreign country” under section 102(d), Federico concluded that the rights and privileges attaching to the protection granted by foreign governments need not be coextensive with the exclusive rights granted under U.S. law, so long as the foreign rights granted are both substantial and exclusive in nature.

Because a Geschmacksmuster conveys substantial and exclusive rights in the design, the Board in Weiss held that a Geschmacksmuster qualifies as prior art under section 102(d). 

Carlson wants Gmuster to not be considered patent under 102a but it is

  • has to fully discolse invention to be considered a patent, Gmuster doesnt do that
    • but...gazette refers reader to Coburg, where they can get all the details if they want
    • thus available to public


person of ordinary skill need not necessarily study the prior art in order to understand the potential use of a symmetrical design.