Indefinite Designs are Definite When Persons Skilled in the Art Discern Scope with Reasonable Certainty

The Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“Board”) rejection of Maatia’s design of an athletic shoe bottom. The Federal Circuit said “the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar view illustration” and reversed the Board’s decision. In re Maatita, Case No. 2017-2037 (Fed. Cir. Aug. 20, 2018) (pdf opinion available here).

Maatita’s design patent application covering the design of an athletic shoe bottom was rejected as non-enabled and indefinite under 35 U.S.C. § 112 because it used a single, two-dimensional plan-view drawing to disclose a shoe bottom design and thereby allegedly left the design open to multiple interpretations regarding the depth and contour of the claimed elements.

As is customary, the solid lines of Figure 1 show the claimed design, whereas the broken lines show structure that is not part of the claimed design—in this case, the shoe bottom environment in which the design is embodied. In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967).

Maatita also argued that there was no enablement problem because “there is no specific allegation that one of ordinary skill would not be able to produce the claimed design, i.e., that such a person would be incapable of selecting an appropriate depth or contour that would result in the illustrated combination of design features.” Thus, the single claim could cover multiple appropriate depth and contour choices without rendering the claim indefinite. Maatita also brought to the Examiner’s attention Ex Parte Kaufman, Appeal 2012-003545, Serial No. 29/247,378 (P.T.A.B. Mar. 14, 2014), an earlier Board decision reversing enablement and indefinite rejections of a design patent application that, like Maatita’s application, disclosed the design for a shoe sole in a two-dimensional, plan-view figure.

In Nautilus, which dealt with indefiniteness in the utility patent context, the Supreme Court emphasized that § 112 ¶ 2 “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” 134 S. Ct at 2129. Thus, a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.

“So long as the scope of the invention is clear with reasonable certainty to an ordinary observer, a design patent can disclose multiple embodiments within its single claim and can use multiple drawings to do so. See In re Rubinfeld, 270 F.2d 391, 396 (C.C.P.A. 1959); see also In re
Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993).”

Under the correct test, which looks to how the ordinary observer would interpret the drawing actually included in the application, the government argues that Maatita’s claim is indefinite because the design, as disclosed in the single, two-dimensional plan or planar view, could be applied to a three-dimensional shoe bottom in a number of ways. Specifically, the shapes specified by Maatita’s design could be flat, concave, convex, or some combination thereof.

In Maatita’s view, the “relative depths and three dimensionality between the surfaces,” are not part of the claimed design at all, and the differences between the possible three-dimensional implementations of his design are simply differences in unclaimed subject matter, see MPEP § 1504.04 (“[W]hen visible portions of the article embodying the design are not shown, it is because they form no part of the claim to be protected”.)

“We believe [under Sec. 112] that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar view illustration.” The “fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan – or planar-view perspective – and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective shown in the drawing. See Asano, 201 U.S.P.Q. at 317.”

Because a designer of ordinary skill in the art, judging Maatita’s design as would an ordinary observer, could make comparisons for infringement purposes based on the provided, two-dimensional depiction, Maatita’s claim meets the enablement and definiteness requirements of § 112. The decision of the Board was reversed.

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