dissenting.
I respectfully dissent. The design of this key blade profile meets the statutory criteria of design patent subject matter. The design statute defines this subject matter as follows:
35 U.S.C. § 171 Patents for designs
Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
Whether the design of the D’636 patent is otherwise patentable, for example on the criteria of originality or non-obviousness, was not reached by the district court and is not before us. However, the panel majority has misapplied 35 U.S.C. § 171 in holding that the arbitrary design of the key profile is “functional” because it mates with its matching keyway.
The design of the key profile is not removed from access to the design statute because the key fits a matching keyway. That two articles are designed in harmony does not deprive the design of access to the design patent law. The design of the key profile is not determined by the function of the key to fit the lock. In the case at bar there are said to be “thousands” of alternative key blade profiles.
The district court concluded that the design of the D’636 patent was not “a matter of ornamental concern to the purchaser or the user,” and thus held that the design was functional. The statute requires that the subject of a design patent be an ornamental design of a useful object. However, “ornamental” does not always mean artistic or pleasing to the eye. The Court of Customs and Patent Appeals early recognized that “the beauty and ornamentation requisite in design patents is not confined to such as may be found in the ‘aesthetic or fine arts.’ ” In re Koehring, 17 C.C.P.A 774, 37 F.2d 421, 422 (1930).
Recognizing that ornamentation is in the eye of the beholder, the courts have sought a more objective standard in the general rule that a design is “ornamental” for purposes of 35 U.S.C. § 171 when it is not primarily functional. See In re Carletti, 51 C.C.P.A. 1094, 328 F.2d 1020, 140 USPQ 653 (1964) (“To qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone.”). However, the article itself must have a utility in order for its design features to be patentable under 35 U.S.C. § 171. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed.Cir.) (“A design patent is directed to the appearance of an article of manufacture. An article of manufacture necessarily serves a utilitarian purpose, and the design of a useful article is deemed to be functional when the appearance of the claimed design is ‘dictated by’ the use or purpose of the article.”), cert. denied, 510 U.S. 908, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993).
If the design is dictated by the function performed by the article of manufacture, the design is not patentable. Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238, 231 USPQ 774, 777 (Fed.Cir.1986). See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 109 S.Ct. 971, 976, 103 L.Ed.2d 118, 9 USPQ2d 1847, 1851 (1989) (“To qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability.”). A design is “not dictated by function *1568alone” when there are alternative designs or configurations available for the article of manufacture, as in the ease before us.
The legal principles governing design patents have their foundation in the important decision of Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 20 L.Ed. 731 (1871), wherein the Supreme Court explained:
The appearance may be the result of peculiarity of configuration, or of ornament alone, or of both conjointly, but, in whatever way produced, it is the new thing, or product, which the patent law regards.
81 U.S. at 525. Courts have measured the term “ornamental” by the non-functionality that distinguishes the subject of a design patent from a utility patent, while recognizing that the design of a useful article is not insulated from the utility of the article. A review of patentable designs in general illustrates the mixture of functional and nonfunctional features embraced in the patented design. See, e.g., Winner Int’l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 15 USPQ2d 1076 (Fed.Cir.1990) (design of steering wheel lock); Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 5 USPQ2d 1625 (Fed.Cir.1988) (design patent for massage device); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 5 USPQ2d 1272 (Fed.Cir.1987) (design patent for changer for tubeless tires); Unette Corp. v. Unit Pack Co., 785 F.2d 1026, 228 USPQ 933 (Fed.Cir.1986) (container for dispensing liquids); In re Igarashi, 228 USPQ 463 (Bd.Pat.App. & Interf.1985) (tire tread design); Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552, 224 USPQ 259 (Fed.Cir.1984) (design for eyeglass display rack).
An effective design patent law must recognize the distinction between functionality of the article and of the particular design of the article or features thereof. See L.A. Gear, supra, (the sneaker tongue, moustache, delta wing, and side mesh, were useful parts of the sneaker, but the overall design of these features and the shoe was not dictated by function alone). This interaction of form and function does not remove the design from the statutory scope of the design patent law, or defeat the statutory patentability of a primarily non-functional design — although it is not always easy to draw a bright line between the functionality of an article and its design, as discussed by J.H. Reichman, Design Protection and the New Technologies: The United States Experience in a Transnational Perspective, 19 Balt. L.Rev. 6 (1989), for design patents often appear on quite mundane articles of manufacture. See, e.g., Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321 (Fed.Cir.1994) (bottle for spices); In re Klein, 987 F.2d 1569, 26 USPQ2d 1133 (Fed.Cir.1993) (roof or siding shingle); KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed.Cir.1993) (concrete block for retaining wall); In re Webb, 916 F.2d 1553, 16 USPQ2d 1433 (Fed.Cir.1990) (femoral hip stem prosthesis); In re Cho, 813 F.2d 378,1 USPQ2d 1662 (Fed.Cir.1987) (bottle cap); Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 800 F.2d 1111, 231 USPQ 67 (Fed.Cir.1986) (upholstered armchair); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed.Cir.1984) (microwave oven); In re Koehring, 17 C.C.P.A. 774, 37 F.2d 421 (1930) (concrete mixing truck).
The design of the key blade profile is primarily non-functional, as the Patent and Trademark Office recognized in granting the patent in suit. The Manual of Patent Examining Procedure defines “design” as follows for purposes of § 171:
The design of an object consists of the visual characteristics or aspects displayed by the object. It is the appearance presented by the object which creates a visual impact upon the mind of the observer.
Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an object, to the surface ornamentation on an object, or both.
Design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be. a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.
MPEP § 1502 (6th ed.1995). See also 1 D. Chisum, Patents § 1.04[2][a] (1996) (“[A] design rests on appearance created by the configuration of the article, surface ornamenta*1569tion, or a combination of configuration and ornamentation.”) (footnote omitted).
The parties to this litigation agree that there are myriad possible designs of key profiles. All keys require, of course, mating keyways. In holding that because the key must fit a keyway, the abstract design of the key profile is converted to one solely of function, the court creates an exception to design patent subject matter. An arbitrary design of a useful article is not statutorily excluded from § 171 simply because in use it interacts with an article of complementary design. Although precedent is sparse, it is contrary to this holding. In Motorola Inc. v. Alexander Mfg. Co., 786 F.Supp. 808, 21 USPQ2d 1573 (N.D.Iowa 1991), the only United States case on this point of which we are aware, the court considered a design patent for a battery housing intended for use in a portable phone. Since the battery housing had to fit into the phone and a battery charger, the accused infringer argued that this function dictated the design. The court disagreed:
The design of the battery housing was not dictated by the design of the battery charger because the charger did not exist when the housing was designed. The design of the phone was done concurrently with the battery housing. Therefore, the design of the battery housing cannot fairly be said to have been “dictated” by the design of the phone.
Id. at 812, 21 USPQ2d at 1577. This reasoning is equally apt in this case. The design of the key profile was not dictated by the design of the keyway, and indeed the two share the same arbitrary design.
In sum, the fact that the key blade is the mate of a keyway does not convert the arbitrary key profile into a primarily functional design. It is not the design of the key profile that is functional, but the key itself. Thus I must, respectfully, dissent from the ruling of the panel majority that the design of the key blade profile is not patentable because the key blade requires a mating keyway.