Docket No. 2017-2037
DYK, REYNA, STOLL
August 20, 2018
Brief summary: Board’s affirmance of the design patent examiner’s rejection of claim “as non-enabled and indefinite under 35 U.S.C. § 112 because it used a single, two-dimensional plan-view drawing” reversed.
Summary: Mr. Maatita appealed the Board’s affirmance of the design patent examiner’s rejection of his “application’s single claim” (i.e., “[t]he ornamental design for a Shoe Bottom as shown and described” and two figures (“a two dimensional plan” and a “planar view”)) “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 left the design open to multiple interpretations regarding the depth and contour of the claimed elements.” The FC panel explained that “[a]s with utility patents, the written description of a design patent must meet certain statutory requirements regarding enablement and indefiniteness” (here, pre-AIA § 112, first paragraph) and that “there is often little difference inn the design patent context between the concept of definiteness…and enablement” since “design patents are limited to what is shown in the application drawings” (Ex Parte Asano, BPAI 1978; In re Mann, FC 1988; MPEP 1504.04 (I)(A)). The FC panel also explained that “[a] visual disclosure may be inadequate-and its associated claim indefinite-if it includes multiple, internally inconsistent drawings” (citing Times Three Clothier, SDNY 2014; Asano; Antonious, FC 1999 (unpublished); Deckers Outdoor, CD Cal. Dec. 1, 2016)) or “when there are inconsistencies between the visual disclosure and the claim language” (Eclectic Prods., D. Or. March 2, 2015); Nautilus, US 2014 (“indefinite” if it “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”); Carnegie Steel, US 1902 (“any description which is sufficient to…serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite”)). “The purpose of § 112 definiteness requirement, then,” the FC panel wrote, “is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed-and therefore what would infringe” (Egyptian Goddess, FC 2008 (en banc) (“[a] design patent is infringed if ‘an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design”); Gorham Mfg., US 1871 (“design patent infringement is viewed from ‘the eye of an ordinary observer”)). “Thus,” the FC panel explained, “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, wold not understand the scope of the design with reasonable certainty based on the claim and visual disclosure” (Int. Seaway, FC 2009; Peters, US 1889 (“That which infringes, if later, would anticipate, if earlier”); In re Rubinstein, CCPA 1959 (“a design patent can disclose multiple embodiments within its single claim and can use multiple drawings to do so”)). The FC panel disagreed with the USPTO that “the same analysis used for obviousness-type double patenting situations” applied here because “Maatita did not provide multiple, potentially conflicting drawings.”
The USPTO argued for indefiniteness because “the design…could be applied to a three-dimensional shoe bottom in a number of ways” (“flat, concave, convex, or some combination thereof”), but Maatita argued these “are simply differences in unclaimed subject matter” (MPEP § 1504.04). The FC panel wrote that “[i]n situations like this…we believe 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” (e.g., “[t]he design for an entire shoe or teapot, for instance, is inherently three-dimensional” while “[t]he design of a rug or placemat…is capable of being viewed or understood in two-dimensions”). The FC agreed with the USPTO that “a shoe sole is typically three-dimensional” but also explained that “Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom could be viewed” and “[a] potential infringer is not left in doubt” (Asano). Thus, the Board decision was reversed.