In our Information Letter N.S. 176, we reported on the case of In re Webb which raised the issue of whether an artificial hip prosthesis could be the subject of a design patent because the prosthesis would be "hidden in use". The Court of Appeals for the Federal Circuit did not find this dispositive and considered the test of design patentability to be whether the visual aspects of the design were significant at any stage in the life of the article embodying the design after completion of its manufacture and assembly, for example, during the period when the prosthesis was on sale. The court remanded this case to the Patent and Trademark Office (PTO) for further consideration.

Following the remand, the PTO rejected the claim on the ground that it was directed to non-statutory subject matter because the artificial hip prosthesis defines an article which is functional in use. The applicant was given the opportunity to present evidence to establish the significance of any ornamentality during the period between its manufacture and its ultimate use but evidence was not submitted.

The applicant argued that the functional aspect of the design could be accomplished in many other ways but the applicant did not submit evidence in support. The Examiner found that the appearance of the device had been dictated by its functional characteristics and not by ornamentality.

The applicant appealed to the Board of Patent Appeals and Interferences which affirmed the Examiner's rejection that the claim was directed to non-statutory subject matter because the prosthesis was functional. The Board added an alternative rejection that the design claim was non-statutory in that the device remains subject to the "hidden in use" requirement because the applicant did not submit evidence to establish ornamentality between the time of manufacture of the design and its ultimate use.