In re Maatita
900 F.3d 1369 (2018)
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Rule of Law:
A design patent application for an article that uses a single, two-dimensional plan-view drawing satisfies the enablement and definiteness requirements of 35 U.S.C. § 112, so long as the drawing clearly defines a perspective from which the design can be understood and a person skilled in the art, viewing the design as an ordinary observer, would understand its scope with reasonable certainty.
Facts:
- Ron Maatita created an ornamental design for the bottom of an athletic shoe.
- On October 24, 2011, Maatita filed a design patent application for this shoe bottom design.
- The application contained a single claim and a two-dimensional, plan-view drawing of the design.
- The drawing depicted the ornamental pattern in solid lines, while the surrounding shoe structure was shown in broken, unclaimed lines.
- The drawing did not specify or illustrate the depth, contour, or other three-dimensional aspects of the design elements.
Procedural Posture:
- Ron Maatita filed design patent application No. 29/404,677 with the U.S. Patent and Trademark Office (USPTO).
- The USPTO patent examiner rejected the application's single claim as non-enabled and indefinite under 35 U.S.C. § 112, arguing the 2D drawing was ambiguous.
- After Maatita responded, the examiner issued a final rejection on the same grounds.
- Maatita (appellant) appealed the final rejection to the Patent Trial and Appeal Board ('Board').
- The Board affirmed the examiner's rejection, finding the single view did not adequately reveal the design's three-dimensional aspects.
- Maatita then appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a design patent application for a three-dimensional object, which uses a single, two-dimensional plan-view drawing that does not show depth or contour, fail the enablement and definiteness requirements of 35 U.S.C. § 112?
Opinions:
Majority - Dyk, Circuit Judge.
No. A design patent application using a single, two-dimensional drawing for a three-dimensional object's surface design does not fail the enablement and definiteness requirements of § 112 if the scope of the claimed design is reasonably certain to an ordinary observer. The court found that the indefiniteness analysis under § 112 for a design patent must be assessed from the perspective of an ordinary observer, aligning it with the standard for infringement. The level of detail required in a drawing depends on whether the design is capable of being defined by that type of illustration. While a shoe bottom is a three-dimensional object, its ornamental surface design is capable of being disclosed and judged from a two-dimensional perspective. By submitting only a 2D plan view, Maatita claimed only the two-dimensional pattern, leaving the depth and contour as unclaimed subject matter. This omission does not create uncertainty because an ordinary observer can still understand the scope of the claimed 2D pattern with reasonable certainty, providing clear notice to potential infringers.
Analysis:
This decision clarifies the application of § 112's definiteness and enablement requirements to design patents, particularly for designs on 3D surfaces depicted in 2D. By aligning the definiteness standard with the 'ordinary observer' test used for infringement, the court created a more consistent framework for design patent law. The ruling gives designers more flexibility, allowing them to secure broader patent protection for a surface pattern without being required to limit their claim to a specific three-dimensional embodiment. This will likely influence patent prosecution strategies, encouraging applicants to claim only the essential two-dimensional features of a design to cover a wider range of physical products.
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