  United States Court of Appeals
      for the Federal Circuit
                 ______________________

          CURVER LUXEMBOURG, SARL,
               Plaintiff-Appellant

                            v.

             HOME EXPRESSIONS INC.,
                 Defendant-Appellee
               ______________________

                       2018-2214
                 ______________________

    Appeal from the United States District Court for the
District of New Jersey in No. 2:17-cv-04079-KM-JBC,
Judge Kevin McNulty.
                ______________________

              Decided: September 12, 2019
                ______________________

    MICHAEL ANTHONY NICODEMA, Greenberg Traurig,
LLP, Florham Park, NJ, argued for plaintiff-appellant.
Also represented by JASON HARRIS KISLIN, BARRY
SCHINDLER.

   STEVEN M. AUVIL, Squire Patton Boggs (US) LLP,
Cleveland, OH, argued for defendant-appellee. Also repre-
sented by JEREMY WILLIAM DUTRA, Washington, DC.

    ERIK STALLMAN, Samuelson Law, Technology & Public
Policy Clinic, University of California, Berkeley School of
Law, Berkeley, CA, for amicus curiae Open Source
2        CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




Hardware Association. Also represented by JENNIFER M.
URBAN.
               ______________________

    Before CHEN, HUGHES, and STOLL, Circuit Judges.
CHEN, Circuit Judge
    Plaintiff-appellant Curver          Luxembourg,       SARL
(Curver) is the assignee of U.S. Design Patent
No. D677,946 (’946 patent), entitled “Pattern for a Chair”
and claiming an “ornamental design for a pattern for a
chair.” The design patent’s figures, however, merely illus-
trate the design pattern disembodied from any article of
manufacture. Curver sued defendant-appellee Home Ex-
pressions Inc. (Home Expressions) in the United States
District Court for the District of New Jersey, alleging that
Home Expressions made and sold baskets that incorpo-
rated Curver’s claimed design pattern and thus infringed
the ’946 patent. Home Expressions moved to dismiss under
Federal Rule of Civil Procedure 12(b)(6), arguing that its
accused baskets could not infringe because the asserted de-
sign patent was limited to chairs only. The district court
agreed with Home Expressions and granted the motion.
The question on appeal is whether the district court cor-
rectly construed the scope of the design patent as limited
to the illustrated pattern applied to a chair, or whether the
design patent covers any article, chair or not, with the sur-
face ornamentation applied to it. Because we agree with
the district court that the claim language “ornamental de-
sign for a pattern for a chair” limits the scope of the claimed
design in this case, we affirm.
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.              3



                        BACKGROUND
    The ’946 patent was filed in 2011 and claims an over-
lapping “Y” design, as illustrated in Figure 1 below. J.A.
24. The title, description of figures, and claim of the ’946
patent all consistently recite a “pattern for a chair.” Id.
But none of the figures illustrate a design being applied to
a chair.




    The term “chair” first appeared through amendment
during prosecution. Curver originally applied for a patent
directed to a pattern for “furniture,” not a chair specifically.
The original title was “FURNITURE (PART OF-).” J.A. 66.
The original claim recited a “design for a furniture part.”
J.A. 67. And each of the figures was described as illustrat-
ing a “design for a FURNITURE PART.” J.A. 66–67. None
of the figures illustrated a chair, any furniture, or any fur-
niture part.
     The Patent Office allowed the claim but objected to the
title, among other things. The examiner stated that under
37 C.F.R. § 1.153 and the Patent Office’s Manual of Patent
Examining Procedure (MPEP) § 1503(I), the title must des-
ignate a “particular article” for the design. Under these
provisions, the examiner found that the title’s use of “Part
of” and the specification’s use of “Part” were “too vague” to
4       CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




constitute an article of manufacture. J.A. 61. To remedy
this problem, the examiner suggested that the title be
amended to read “Pattern for a Chair,” and that “[f]or con-
sistency,” the “title [] be amended throughout the applica-
tion.” Id. (noting that “[t]he claim in a design patent must
be directed to the design for an article” under 35 U.S.C.
§ 171). Curver adopted the examiner’s suggestion, replac-
ing the original title with “Pattern for a Chair” and replac-
ing “furniture part” with “pattern for a chair” in the claim
and figure descriptions to be consistent with the amend-
ment to the title. J.A. 66–67. Referring to these amend-
ments, Curver acknowledged that “the title and the
specification have been amended as required in the Office
Action.” J.A. 69. Curver did not amend the figures to
newly illustrate a chair. The examiner accepted these
amendments and allowed the application.
              DISTRICT COURT PROCEEDINGS
    Home Expressions makes and sells baskets that incor-
porate an overlapping “Y” design similar to the pattern dis-
closed in the ’946 patent, as shown below. J.A. 5.
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.            5



    Curver filed a complaint against Home Expressions in
district court accusing these basket products of infringing
the ’946 patent. Home Expressions filed a motion to dis-
miss Curver’s complaint under Rule 12(b)(6) for failing to
set forth a plausible claim of infringement. The district
court granted the motion.
      To determine whether the complaint stated a plausible
infringement claim, the district court conducted a two-step
analysis. First, it construed the scope of the design patent.
Second, it compared the accused products to the claimed
design as construed to determine whether the products in-
fringed. Under the “ordinary observer” test, an accused
product infringes a design patent if “in the eye of an ordi-
nary observer . . . two designs are substantially the same,”
such that “the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it to be
the other . . . .” Gorham Co. v. White, 81 U.S. 511, 528
(1871) (articulating the “ordinary observer” test for design
patent infringement); Egyptian Goddess, Inc. v. Swisa,
Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) (making
the “ordinary observer” test in Gorham the sole test for de-
termining design patent infringement). At the first step,
the district court construed the scope of the ’946 patent to
be limited to the design pattern illustrated in the patent
figures as applied to a chair, explaining that “[t]he scope of
a design patent is limited to the ‘article of manufacture’—
i.e., the product—listed in the patent.” J.A. 16. At the sec-
ond step, the district court found that an ordinary observer
would not purchase Home Expressions’s basket with the or-
namental “Y” design believing that the purchase was for an
ornamental “Y” design applied to a chair, as protected by
the ’946 patent. Accordingly, the district court dismissed
the complaint pursuant to Rule 12(b)(6) for failing to set
forth a plausible claim of infringement.
    Curver timely appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(A).
6        CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




                   STANDARD OF REVIEW
    We review a decision to grant a motion to dismiss un-
der regional circuit law. C&F Packing Co., v. IBP, Inc., 224
F.3d 1296, 1306 (Fed. Cir. 2000). Under Third Circuit law,
we review a district court’s grant of a motion to dismiss un-
der Rule 12(b)(6) de novo. Sands v. McCormick, 502 F.3d
263, 267 (3d Cir. 2007).
                         DISCUSSION
     On appeal, Curver argues that in determining that the
scope of its design patent was limited to a chair, the district
court improperly relied on claim language reciting a “pat-
tern for a chair,” rather than focusing on the figures which
are devoid of any chair illustrations. Given that the figures
fail to illustrate any particular article of manufacture, 1




    1    In its Reply, Curver argues that the figures depict
a “three-dimensional panel structure that includes the or-
namental Y pattern,” and that under Samsung Electronics
Co. v. Apple Inc., 137 S. Ct. 429, 435 (2016), this “panel”
provides the requisite “article of manufacture” because it is
a “component” of a product. Appellant’s Reply Br. at 6–7.
This is the first time on appeal Curver attempts to identify
any article of manufacture in the drawings, and thus we
find this argument waived. In any event, we note that we
are unpersuaded that Curver’s purported panel constitutes
the type of “component” contemplated by Samsung as be-
ing an “article of manufacture.” In Samsung, the compo-
nents covered by Apple’s design patents were parts of a
concrete “multicomponent” smartphone product, not a sur-
face ornamentation disembodied from any identifiable
product, as here. 137 S. Ct. at 433–35. Taking Curver’s
argument to its logical extreme, any applicant could poten-
tially obtain a patent on a two-dimensional graphic so long
as it is illustrated with some thickness such that it could
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.            7



Curver’s argument effectively collapses to a request for a
patent on a surface ornamentation design per se. As
Curver itself acknowledges, our law has never sanctioned
granting a design patent for a surface ornamentation in the
abstract such that the patent’s scope encompasses every
possible article of manufacture to which the surface orna-
mentation is applied. Oral Arg. at 10:41–11:04. We decline
to construe the scope of a design patent so broadly here
merely because the referenced article of manufacture ap-
pears in the claim language, rather than the figures.
     This is a case of first impression.               Under
35 U.S.C. § 171, federal statute permits patent protection
for a “new, original and ornamental design for an article of
manufacture.” To define the scope of a design patent, we
have traditionally focused on the figures illustrated in the
patent. See, e.g., Pac. Coast Marine Windshields Ltd. v.
Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014)
(“[I]n design patents, unlike utility patents, the claimed
scope is defined by drawings rather than language . . . .”);
In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (“It is
the drawings of the design patent that provide the descrip-
tion of the invention.”); In re Klein, 987 F.2d 1569, 1571
(Fed. Cir. 1993) (“As is usual in design applications, there
is no description other than the drawings.”); In re Mann,
861 F.2d 1581, 1582 (Fed. Cir. 1988) (“The claim at bar, as
in all design cases, is limited to what is shown in the appli-
cation drawings.”). But critically, none of these cases con-
front the atypical situation we have here, where all of the
drawings fail to depict an article of manufacture for the or-
namental design. Thus, we address for the first time
whether claim language specifying an article of manufac-
ture can limit the scope of a design patent, even if that ar-
ticle of manufacture is not actually illustrated in the



constitute a panel “component” that is part of a larger prod-
uct.
8       CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




figures. Given that long-standing precedent, unchallenged
regulation, and agency practice all consistently support the
view that design patents are granted only for a design ap-
plied to an article of manufacture, and not a design per se,
we hold that claim language can limit the scope of a design
patent where the claim language supplies the only instance
of an article of manufacture that appears nowhere in the
figures.
    In Gorham, the leading design patent case decided
more than one hundred years ago, the Supreme Court
stated that “[t]he acts of Congress which authorize the
grant of patents for designs” contemplate “not an abstract
impression, or picture, but an aspect given to those objects
mentioned in the acts.” 81 U.S. at 524. In characterizing
the invention in a design patent, the Supreme Court fo-
cused not only on the distinctiveness of the design pattern
itself, but how the design transformed the appearance of
the “article of manufacture” to which the design was ap-
plied. Id. at 524–25 (“And the thing invented or produced,
for which a patent is given, is that which gives a peculiar
or distinctive appearance to the manufacture, or article to
which it may be applied, or to which it gives form.”).
    Decades later, our predecessor court reinforced
Gorham’s application-focused view of design patents, stat-
ing that “it is the application of the design to an article of
manufacture that Congress wishes to promote, and an ap-
plicant has not reduced his invention to practice and has
been of little help to the art if he does not teach the manner
of applying his design.” In re Schnell, 46 F.2d 203, 209
(CCPA 1931) (emphasis added).
    Agency practice is in line with this precedent. For over
one hundred years, the Patent Office has made clear that
it does not grant patents for designs disembodied from an
article of manufacture. In Ex parte Cady, an artist applied
for a design patent on an illustration of “Peter Rabbit,” a
character in a well-known children’s book. 1916 Dec.
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.            9



Comm’r Pat. 62 (1916). The Commissioner of Patents up-
held the examiner’s rejection of the application, explaining:
    [a] disembodied design or a mere picture is not the
    subject of [design] patent, and it follows that the
    specification must not so indicate . . . . The inven-
    tion is not the article and is not the design per se,
    but is the design applied.
Id. at 68 (emphases in original). Consistent with precedent
and agency practice, the Patent Office promulgated
37 C.F.R. § 1.153 2 in 1959, specifying rules for the form
and content of design patent applications. Curver, who
does not challenge this regulation, is bound by it here. Sec-
tion 1.153(a) provides:
    The title of the design must designate the particu-
    lar article. No description, other than a reference
    to the drawing, is ordinarily required. The claim
    shall be in formal terms to the ornamental design
    for the article (specifying name) as shown, or as
    shown and described.
§ 1.153(a) (emphasis added). This regulation tells us two
things: 1) the claim is not directed to a design per se, but a
design for an identified article, and 2) the scope of the de-
sign claim can be defined either by the figures (“as shown”)
or by a combination of the figures and the language of the
design patent (“as shown and described”). Id. Thus, to ob-
tain a design patent, § 1.153(a) requires that the design be
tied to a particular article, but this regulation permits
claim language, not just illustration alone, to identify that
article.



    2   We discuss the pre-America Invents Act (AIA) ver-
sion of 37 C.F.R. § 1.153 because the ’946 patent was filed
on April 8, 2011, before September 16, 2012, the effective
date of the AIA.
10       CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




     The Patent Office’s guidelines governing examination
procedure make clear that a design patent will not be
granted unless the design is applied to an article of manu-
facture. The MPEP defines “the subject matter which is
claimed [a]s the design embodied in or applied to an article
of manufacture (or portion thereof)” and explains that the
“[d]esign is inseparable from the article to which it is ap-
plied and cannot exist alone merely as a scheme of surface
ornamentation.” MPEP § 1502 (emphasis added). Fur-
thermore, these guidelines direct examiners to reject under
35 U.S.C. § 171 a claim “that is not applied to or embodied
in an article of manufacture.” MPEP § 1504.01. As the
MPEP suggests, identifying the article of manufacture
serves to notify the public about the general scope of pro-
tection afforded by the design patent.           See MPEP
§ 1503.01(I) (amended November 2015) (“The title of the
design identifies the article in which the design is embod-
ied by the name generally known and used by the pub-
lic and may contribute to defining the scope of the claim.”).
If we adopted a design per se rule, “the title and claim lan-
guage would provide no useful information at all.” Sarah
Burstein, The Patented Design, 83 TENN. L. REV. 161, 212
(2015). In contrast, tying the design pattern to a particular
article provides more accurate and predictable notice about
what is and is not protected by the design patent. See id. 3




     3   Limiting the scope of a design patent based on dis-
closed articles of manufacture also promotes the admin-
istrability of the examination process by imposing
practicable limits on prior art searching, which would oth-
erwise be unduly time-consuming. Id. Given that inven-
tors of creative designs can seek protection through
copyright, placing such burdens on the patent system
seems particularly unnecessary. See Star Athletica, L.L.C.
v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 (2017)
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.           11



     On appeal, Curver argues that the district court im-
properly applied prosecution history estoppel to limit the
scope of its design patent to a chair by focusing on the de-
sign patent’s text instead of the figures. Curver further
notes that because the originally-filed claim reciting a “de-
sign for a furniture part” was allowed by the examiner be-
fore the claim was amended to recite a “pattern for a chair,”
Curver did not surrender the broader scope encompassed
by its original claim. Appellant’s Opening Br. at 18–21.
While we agree that courts typically look to the figures to
define the invention of the design patent, it is inappropri-
ate to ignore the only identification of an article of manu-
facture just because the article is recited in the design
patent’s text, rather than illustrated in its figures. Here,
the prosecution history shows that Curver amended the ti-
tle, claim, and figure descriptions to recite “pattern for a
chair” in order to satisfy the article of manufacture require-
ment necessary to secure its design patent. The examiner
found that Curver’s original title of “FURNITURE (PART
OF-)” was “too vague” to constitute a “particular article”
under § 1.153(a) and suggested that the title be amended
to read “Pattern for a Chair.” J.A. 61. Curver did not dis-
pute the validity of that requirement and instead amended
the title, claim, and figure descriptions to clarify that the
pattern was for a chair “as required in the Office Action.”
J.A. 69. The Patent Office accepted these amendments and
did not require Curver to supply new drawings illustrating
the ornamental design applied to a chair. Because the “pat-
tern for a chair” amendments were made pursuant to
§ 1.153 requiring the designation of a particular article of
manufacture, and this requirement was necessary to se-
cure the patent, we hold that the scope of the ’946 patent is
limited by those amendments, notwithstanding the


(stating that copyright protects “pictorial, graphic, or
sculptural feature[s]” that are separable from a useful ar-
ticle).
12       CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




applicant’s failure to update the figures to reflect those lim-
iting amendments.
     Curver additionally argues that the district court mis-
applied the test for determining infringement based on
In re Glavas, 230 F.2d 447, 450 (CCPA 1956). According to
Curver, Glavas suggested that a surface ornamentation for
an article of manufacture can be anticipated by a prior art
article that shares the same surface ornamentation, even
though the prior art article is completely unrelated, i.e.,
non-analogous art, to the article shown in the design pa-
tent. Appellant’s Opening Br. at 15–18. Curver thus reads
Glavas as stating that the underlying article to which a
surface ornamentation is applied is of no moment when
considering anticipation. We have historically used the
same test to determine anticipation and infringement. See,
e.g., Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)
(“That which infringes, if later, would anticipate if ear-
lier.”); Int’l Seaway Trading Corp. v. Walgreens Corp., 589
F.3d 1233, 1239 (Fed. Cir. 2009) (“[I]t has been well estab-
lished for over a century that the same test must be used
for both infringement and anticipation . . . .”). Seeking to
extend Curver’s asserted anticipation rationale from Gla-
vas to infringement here, Curver argues that a product
that applies a design pattern to a basket can infringe a de-
sign patent that claims the same design pattern “for a
chair.” We disagree because we are unpersuaded that the
statement in Glavas about anticipation necessarily im-
pacts our infringement decision.
    First, we note that the statement about anticipation in
Glavas is dictum and thus not binding. Because the Glavas
court was asked only to review a determination of
CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.           13



obviousness, 4 the statement about anticipation was unnec-
essary to reach its holding about obviousness.
     Second, Glavas does not appear to go as far as Curver
would like. The relevant portion of Glavas cited by Curver
contemplated anticipation by a prior art article having a
different “use” than the article illustrated in the design pa-
tent but nevertheless sharing “substantially the same ap-
pearance.” Glavas, 230 F.2d at 450 (“It is true that the use
to which an article is to be put has no bearing on its patent-
ability as a design and that if the prior art discloses any
article of substantially the same appearance as that of an
applicant, it is immaterial what the use of such article is.
Accordingly, so far as anticipation by a single prior art dis-
closure is concerned, there can be no question as to nona-
nalogous art in design cases.”). Contrary to Curver’s
assertion, Glavas’s dictum did not state that a design pa-
tent disclosing a surface ornamentation applied to a given
article (e.g., an ornamental drawing on the side of a flower
pot) can be anticipated by an unrelated article having a
very different physical appearance and form (e.g., cover of
a laptop computer). Here, there is no dispute that a basket
embodying a particular ornamental pattern is not substan-
tially similar in appearance to a chair embodying that
same pattern such that the former would infringe a design
patent covering the latter. See Oral Arg. at 6:26–6:59.
    Third, even if Glavas’s dictum permitted anticipation
by articles of manufacture that looked distinctly different
from the article illustrated in the design patent, that dic-
tum is subject to our en banc decision in Egyptian Goddess,
which changed the standard for determining design patent


    4   Specifically, the Glavas court was asked to address
whether a prior art reference showing a pillow could serve
as analogous art for purposes of rendering obvious a design
patent application for a swimming “float.” Glavas, 230
F.2d at 449.
14       CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.




infringement to focus solely on the “ordinary observer” test.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678
(Fed. Cir. 2008) (holding that “the ‘point of novelty’ test
should no longer be used in the analysis of a claim of design
patent infringement” and that the “sole test” should be “the
‘ordinary observer’ test” based on substantial visual simi-
larity between the accused product and claimed design).
Because we use the same test for determining infringement
and anticipation, the ordinary observer test is now the sole
controlling test for determining anticipation of design pa-
tents too. Int’l Seaway Trading Corp., 589 F.3d at 1240
(holding that in light of Egyptian Goddess, “we now con-
clude that the ordinary observer test must logically be the
sole test for anticipation as well”). To the extent Glavas’s
dictum discussing anticipation is in tension with Egyptian
Goddess, that dictum must give way to the ordinary ob-
server test, which controls for purposes of Curver’s appeal
in this design patent infringement case. Under this ordi-
nary observer test, Curver does not dispute that the district
court correctly dismissed Curver’s claim of infringement,
for no “ordinary observer” could be deceived into purchas-
ing Home Expressions’s baskets believing they were the
same as the patterned chairs claimed in Curver’s patent.
See Oral Arg. at 6:26–6:59. Thus, for all of the above rea-
sons, we find that Curver’s reliance on Glavas lacks merit.
                       CONCLUSION
    We have considered Curver’s remaining arguments
and find them unpersuasive. Accordingly, we affirm the
district court’s grant of Home Expressions’s motion to dis-
miss the complaint for failure to state a plausible claim of
design patent infringement.
                       AFFIRMED
                           COSTS
     No costs.
