## Facts

- Phylliss B. Mann filed a design patent application on July 11, 1986, claiming an ornamental design for a wrought-iron table.
- A table embodying the claimed design was publicly displayed at a U.S. trade show on July 7, 1985.
- The PTO examiner rejected the application under 35 U.S.C. § 102(b), finding the trade-show display was a “public use” more than one year before filing.
- The Board of Patent Appeals and Interferences affirmed the rejection.
- Mann argued (1) “mere display” was not “public use” because the table was not used in its natural way, (2) trade-show display should not count as public use, and (3) the display was experimental.
- Mann relied on a prior decision involving a restricted, controlled survey display of a design image to argue the display was not a disqualifying public use.

## Issues

1. Whether public display of an article embodying a claimed ornamental design at a trade show more than one year before filing constitutes “public use” under 35 U.S.C. § 102(b).
2. Whether an “experimental use” theory can prevent a § 102(b) bar for a design patent when the pre-filing display was used to gauge reactions to the design.
3. Whether a prior decision involving restricted exhibition of design images negates a § 102(b) bar for an unrestricted trade-show display of the design embodied in an article.

## Decision

- The Federal Circuit affirmed the Board’s rejection of the design application.
- The court held the trade-show display of the table embodying the claimed design was a § 102(b) public use.
- The court rejected the argument that “mere display” is not “use” for an ornamental design.
- The court held the experimental-use doctrine applicable to functional inventions does not apply in the same manner to ornamental designs, and market-reaction testing is not “experimentation” that avoids § 102(b).
- The court distinguished the relied-upon prior decision as involving a restricted, closely controlled survey, unlike an open trade-show display, and noted it was not binding.

## Legal Principles

- For an ornamental design, the relevant “use” is embodiment of the design in an article and exposure to view; public exhibition of the article can constitute “public use” under 35 U.S.C. § 102(b).
- An unrestricted public trade-show display of an article embodying the claimed design more than one year before filing triggers the § 102(b) time bar.
- The experimental-use concept developed for functional inventions does not readily apply to design patents; seeking consumer preferences or market feedback is not the type of experimentation that negates public use.
- Design patent claims are confined to the visual appearance shown in the drawings; later changes yield a different design rather than “experimentation” on the claimed one.
- Fact patterns involving limited, controlled, non-public or quasi-confidential design showings may be treated differently from open public exhibition, but do not excuse an unrestricted trade-show display.

## Conclusion

The Federal Circuit held that publicly displaying an article embodying a claimed ornamental design at a trade show more than one year before filing is a § 102(b) public use that bars a design patent, and that market-testing the design does not qualify as experimental use to avoid the statutory bar.


In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)