Obviousness: can features from different categories of products be combined to invalidate a design patent?

Introduction

“I have a tank, I have a gun—boom! Tank gun?”

Each year the CNIPA releases a list of Top Ten Patent Re-examination and Invalidation Cases. These cases are meant to be guiding cases, showcasing exemplary real-world decisions that clarify certain aspects of the law. Over the next several months we will be highlighting many of these cases.

Today’s article relates to design patents and the standard of what is “distinctly different”. Particularly, this case asks whether two prior art design elements can be combined to invalidate the novelty of a design if the two prior art features come from different categories of products.

The Chinese patent law states:

“A granted design patent, when compared with an existing design or a combination of existing design features, must be distinctly different.”

In other words, a design patent cannot be obtained merely through the simple superimposition or substitution of features from existing designs.

Yet, in both examination and invalidation practice for design patents, the key point of contention typically centres upon “combination comparison” （组合对比）: whether the combination of existing designs and their respective features can be legitimately established.

The Patent Examination Guidelines provides a general methodology for determining such combinations:

1. Identify the content of the existing designs;
2. Compare the existing designs or their features with the corresponding portion of the disputed design;
3. Where the compared portions are identical or differ only insignificantly, determine whether there exists any teaching or suggestion (启示) of a combination.

The first two steps are relatively objective. However, the Guidelines do not provide a clear standard for evaluating whether a teaching or suggestion of combination exists. They merely enumerate three scenarios in which such a teaching is considered to be obviously present. In practice, many disputed “combination comparisons” do not fall within these enumerated scenarios.

Case No. 7 of the Top Ten Patent Reexamination and Invalidation Cases of 2024 (Case No. 6W126786), involving the invalidation trial of a toy (“Bubble Tank”) (Application No. 202230164195.9), is particularly instructive. The case examined whether Evidence 1 and Evidence 2 could be combined to obtain the disputed design, thereby offering a valuable perspective on how to accurately evaluate whether a teaching or suggestion of combination exists in the context of a design patent.

The Disputed Design and Evidence

• The Disputed Design (Bubble Tank)

• Evidence 1: Toy car（remote control water ball tank）

• Evidence 2: Toy gun（bubble gun）

Central Issues

The petitioner contended that both cited references are toys, each with similar launching parts, such that one part could be substituted for the other. By contrast, the patentee argued that the references belonged to different categories of toys, that no teaching or suggestion for combination existed, and that the launching parts were materially different and therefore not interchangeable.

Thus, two questions framed the dispute:

1. Does the classification of the products (as belonging to the same or different categories) affect whether they may be combined?
2. If so, is the proposed combination technically and visually feasible?

The Re-examination Board’s Views

Product Category as a Condition for Combination

The Board first addressed whether designs must belong to the same or similar product category in order for their features to be combined. It concluded that product category similarity is not a necessary condition for Combination.

• Neither the Patent Law nor the Implementing Regulations restrict the prior designs available for combination to those within the same or similar product category.
• The Patent Examination Guidelines enumerate several scenarios where an obvious motivation for combination exists, including cases where product categories are not aligned.¹ These scenarios are illustrative, not exhaustive.

Accordingly, while same-category designs frequently provide grounds for combination, product category similarity is not determinative.

Application to the Present Case

The Board confirmed that Evidence 1 (toy car) and Evidence 2 (toy gun) both fall within the broader category of toys. Even if regarded as different subtypes, such a distinction would not preclude combination.

The Three-Step Test for Combination

The Board articulated a structured three-step test for assessing whether a design combination is permissible:

1. Separability of Design Features
   • Features proposed for combination must be physically or visually distinguishable as independent design elements.
2. Functional Similarity or Precedent
   • The features must serve the same or a similar purpose, or precedent for such a combination must exist in prior designs.
3. Feasibility for the Ordinary Consumer
   • The combination must not exceed the cognitive ability of the ordinary consumer.
   • The resulting product should present a visually and functionally coherent whole, without necessitating substantial redesign or alterations beyond adaptive modification.

Failure to satisfy any one of these conditions precludes a finding that combination is established.

Application of the Three-Step Test

• Step 1: Separability of Design Features
  • In Evidence 1, the toy car comprises a lower body and an upper water-ball launching part, which are physically and visually distinct.
  • In Evidence 2, the toy gun consists of a gun body and a bubble-launching part, also separable.
  • Step 1 is satisfied.
• Step 2:Functional Similarity or Precedent
  • Both launching parts perform analogous functions as projectile-launching modules.
  • Step 2 is satisfied.
• Step 3: Feasibility for the Ordinary Consumer
  • The interfaces for attaching the launching parts differ significantly in shape and structure.
  • Without major redesign, the parts cannot be combined into a unified product.
  • Such redesign would exceed the adaptive capabilities of an ordinary consumer.
  • Step 3 is not satisfied.

Because the proposed combination failed Step 3, the Board held that the combination was not established and maintained the validity of the disputed design patent.

EIP Thought

Design patents are a strategically valuable form of protection, offering a streamlined path to securing rights over product aesthetics. Although design cases seldom appear among China’s annual Top 10 Re-examination and Invalidation Cases, their inclusion provides critical guidance on evolving examination standards.

One key takeaway from this case is the clarification that combinations of prior designs need not originate from the same product category to render a new design obvious. Instead, examiners and parties should evaluate: (1) whether the design features are physically independent; (2) whether they share similar functions or intended uses; and (3) the level of technical difficulty involved in combining them. This approach raises the bar for proving non-obviousness in design patent applications and invalidations.

Additionally, the case reinforces that the assessment of design combination or motivation must be conducted from the perspective of an “ordinary consumer” of the product—a standard distinct from the “person skilled in the art” applied in invention and utility model evaluations. This distinction, though sometimes overlooked, is essential for accurate and consistent applications of the proper standard when determining obviousness.

If you would like to have more information on this matter or would like to have our advice, please feel free to contact us at [email protected].

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

1. Patent Examination Guidelines (2020), Part IV, Chapter 3, § 4.3.

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