Beruflich Dokumente
Kultur Dokumente
IN RE RON MAATITA
Nathan K. Kelley
Solicitor
Thomas J. KJ:ause
Deputy Solicitor
William La Marca
Amy J. Nelson
Associate Solicitors
October 10,2017
Design Claim on Appeal
Figure 1
1. Enablement........................................... 5
2. Indefiniteness .......................................... 7
V. ARGUMENT .................................................................. 14
1
2. Each patent is issued on its own facts ............................... 35
11
TABLE OF AUTHORITIES
CASES
AK Steel Corp. v. So/lac, 344 F.3d 1234 (Fed. Cir. 2003) ............................ 19, 21, 22, 26
Alcon Research Ltd v. Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014) ......................... 14
Auto. Techs. Int'l, Inc. v. BMW ofN. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007) ............ 19
Egyptian Goddess. Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) ............................... 28
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ............... 30, 32
Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361 (Fed. Cir. 1997) ................................... 14
111
Katifman, Ex Parte, 2012-003545 (PTAB March 14, 2014) ......................................... 33
MagSil Cotp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377 (Fed. Cir. 2012) ... 19, 24
Mann, In re, 861 F.2d 1581 (Fed. Cir. 1988) ......................................................... 16, 27
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ...................................... 32
Nett Designs, In re, 236 F.3d 1339 (Fed. Cit. 2001) ..................................................... 35
Oddz!Jn Prods., Inc. v. Just Tqys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) ........................... 28
Packard, In re, 751 F.3d 1307 (Fed. Cit. 2014) .......................................... 15, 28, 29, 30
Philco Cotp. v.AdmiralCmp., 199 F. Supp. 797 (D. Del. 1961) ........................ 18, 19,22
Phillips v. AW'H Cotp., 415 F.3d 1303 (Fed. Cit. 2005) ............................................... 27
Rubitifield, In re, 270 F.2d 391 (CCPA 1959) .................................................. 16, 24, 26
Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016) .................................. 16
IV
Secure Axcess, UC v. PNC Bank National Association,
848 F.3d 1370 (Fed. Cir. 2017) ................................................................................. 15
Sitrick v. Dreamworks, UC, 516 F.3d 993 (Fed. Cir. 2008) ................................... 18, 19
Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471 (1944) ............. 19, 32
Wands, In re, 858 F.2d 731, 736-7 (Fed. Cir. 1998) ..................................................... 18
Watts, In re, 354 F.3d 1362 (Fed. Cir. 2004) ......................................................... 14, 34
Zahn, In re, 617 F.2d 261 (CCPA 1980) ......................................................... 15, 16, 17
Zlet~ In re, 893 F.2d 319 (Fed. Cir. 1989) ...................................................... 27, 29, 30
STATUTES
35 U.S.C. 112 .................................................................................................. passim
v
35 U.S.C. 171 ............................................................................................... 1, 15, 17
RULES
Fed. Cir. R. 32.1 (d) .................................................................................................. 30
REGULATIONS
37 C.P.R. 1.152 .............................................................................................. 4, 8, 22
Vl
STATEMENT OF RELATED CASES
The Director is not aware of any other appeal from the Patent Trial and
Appeals Board (Board) for the United States Patent and Trademark Office in
connection with this case that has previously been before this Court. The Director
is also unaware of any other case pending in this or any other court that will directly
Vll
I. STATEMENT OF THE ISSUE
Section 112 of the Patent Act requires that "[t]he specification shall contain a
written description of the invention ... in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same." 35 U.S.C. 112, ~ 1. 1 Section 112 also
requires that "[t]he specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant regards as
the invention." 35 U.S.C. 112, ~ 2. Like utility patents, these requirements apply to
Here, the Examiner and Board found that Maatita's "Shoe Bottom" design was
not enabled throughout the full scope of his claim because the two-dimensional
drawings provided by Maatita - which did not reveal relative depths and three-
Examiner and Board also found that Maatita's claimed design is indefinite because his
disclosure which only shows a two-dimensional plan view of his design fails to inform
detail to enable the claimed invention under 35 U.S.C. 112, ~ 1, and rendered the
Thus, the issues on appeal are whether the Board properly determined that
on October 24, 2011 ('677 application) (Appx21-33) 2 covering the design of a "Shoe
Bottom" with two figures 3 showing a single plan view of a shoe bottom design and a
single claim reciting: "The ornamental design for a Shoe Bottom as shown and
design that was to be applied to a three-dimensional shoe bottom, the examiner found
the claimed design was not understandable to an ordinary designer and therefore
rejected Maatita's design claim under 35 U.S.C. 112, first and second paragraph.
Appx62-78 (final action, May 13, 2014). On December 16,2014, Maatita appealed to
the Board under 35 U.S.C. 134. Appx94-96. On March 16,2015, the examiner
2
"Appx _" refers to pages of the Joint Appendix; "Br. at_" refers to pages of
Maatita's opening brief.
3
The Board refers solely to Figure 1 of the '677 application. Appx3. Although
the application includes Figs. 1 & 2, they show the same design from the same
viewpoint. Appx29-30.
2
issued an answer to Maatita's Board brief. Appx111-138 (Answer). The Board agreed
with the Examiner that the curved shapes of the different surfaces of the claimed
with any specificity and the two-dimensional plan view of the design disclosed in the
application did not adequately reveal the relative depth and three-dimensionality
between the surfaces. Thus, the Board affirmed the Examiner's rejection of the
U.S.C. 112, first and second paragraphs. Appx6-8. This appeal followed.
The claim on appeal is for "an ornamental design for a Shoe Bottom as shown
and described" in the two-dimensional plan view shown in Figures 1 and 2. Figure
3
The claimed subject matter is shown with solid lines. See MPEP 1503.02 (III)
(~ 15.50) ("The ornamental design which is being claimed must be shown in solid
lines are solely for the purpose of illustrating context and form no part of the claimed
design." 4 Appx28. The Examiner objected because Figures 1 and 2 show "two
Figures 1 and 2 resides solely in the unclaimed context/ environment of the shoe
bottom." Appx39. On May 1, 2014, Maatita amended the specification clarifying that
both figures 1 and 2 show identically claimed subject matter in two environments.
Appx53-54; Appx113-114.
The Examiner determined that the claimed design on appeal failed to satisfy
first and second paragraphs of Section 112 because: (i) the design was not sufficiently
described in "full, clear, concise and exact terms" sufficient to enable an ordinary
designer to make the design and (ii) the disclosed design claim failed to "particularly
point out and distinctly claim" the subject matter which Maatita regards as the
4
"Structure that is not part of the claimed design, but is considered necessary to
show the environment in which the design is associated, may be represented in the
drawing by broken lines." MPEP 1503.02 (III); see also 37 C.F.R. 1.152. When
broken lines are used, the specification should include a textual statement indicating
the purpose of the broken lines and stating that they form no part of the claimed
design. MPEP 1503.01 (II).
4
invention. See Appx64 (final); Appx114 (Answer). In particular, the Examiner found
the claimed design was "not enabled because the disclosed design is not
conjecture" and was "indefinite because the scope of protection sought is not
Appx64; Appx114.
1. Enablement
Section 112, ~ 1 because the two-dimensional top view of the design disclosed by the
aspects of a shoe bottom design could not be reasonably ascertained from the figures
in the '677 application that show only a two-dimensional top view of the design. Id.
Specifically, the Examiner found that the contours, relative placement, and orientation
of the elements delineated by the shoe bottom design were not sufficiently displayed
by the figures. The figures show only a two-dimensional plan view of the design that
dimensions as applied to a shoe bottom. See Appx65-66 (finding that "the isolated
elements could be flush, recessed, raised, covered, flat, and of a variety of contours").
5
on the two-dimensional disclosure provided in the drawings. The Examiner's four
variety of heights and contours of the shoe bottom design that an ordinary designer
can envision when viewing the two-dimensional plan view drawings provided with
Maatita's application. Appx71 ("applicant's single claim would protect any design that
matches the claimed design when seen from the one, isolated plan view vantage
point."). The Examiner's illustrations also demonstrate that the issue is not simply
the height or depth of the features, but whether those features are convex or concave.
The Examiner determined that Maatita's single claim supported only by a two-
three-dimensional shoe bottom "including the four examples shown above" that
122 ("It is noted that each of the four would be considered patentably distinct even
though Appellant agrees that they are all embodiments of his design."). Accordingly,
6
the Examiner found Maatita's "single claim protects a number of patentably distinct
designs, and covers a large range of possible configurations, which contradicts the
Examiner determined that Maatita's claim is "not enabled as one [of ordinary skill]
would not know which of the many possible distinct embodiments of the claim
[Maatita's] is in order to make and use [Maatita's] design." Id.; see also Appx118 ("As it
is, any number of markedly different, and patentably distinct designs could be created
ordinary skill would have any idea if the design he achieved was in fact Appellant's
. ") .
d es1gn.
2. Indefiniteness
showing only a two-dimensional plan view of his design, did not properly set forth the
indefmite. Appx64-66; Appx114-116. The Examiner explained, when "the shape and
particularly point out and distinctly claim the subject matter applicant regards as his
7
1504.04); Appx114 (the "claim is indefinite because the scope of protection sought
5
is not disclosed in the specification or understandable as depicted in the drawings.").
possible solutions that would match [Maatita's] design [shown] in [the] plan view ... ,
but which, when made ... , would vary radically in appearance from any other
vantage point." Appx70; Appx115 ("these elements and areas are unclear as they
understand how the design gives form to the three-dimensional article, one must
claiming does not allow a patent examiner, a court, or the public to sufficiently
The Examiner recognized that Maatita did not seek a design that simply
particular visual impression in that context. Appx72 - Appx73, n.4. The Examiner
so that there is a particular understanding of the design in the context of the article,"
5 See also 37 C.F.R. 1.152 ("[t]he design must be represented by a drawing ...
and must contain a sufficient number of views to constitute a complete disclosure of
the appearance of the design.")
8
in this case, a three-dimensional shoe bottom. Appx73; Appx136 ("The very fact that
Appellant insists his claim includes configuration-type designs while he is insisting his
The Examiner also found that "the written description is [of] no help in removing the
the Examiner found "there are myriad other configurations that also would match
[Maatita's] single plan view, but which when made into a three-dimensional shoe
bottom, could vary widely in appearance, shape, and contour" he concluded that
Maatita had "not particularly pointed out and distinctly claimed his invention" as
appeal. Appx2-8. The Board characterized the key issue as whether Maatita's "claim
varying tread depth of the sole bottom design depending on how the design is
the Examiner that each of the illustrated designs are "patentably distinct, such that the
claim covers multiple patentably distinct designs." Appx4. The Board also
recognized that Maatita did "not refute that the claim covers the Examiner's various
depicted embodiments" and did "not refute that the covered embodiments may be
9
patentably distinct" (AppxS), but simply argued that that the depth of the tread of the
shoe bottom design was not a limitation of his claim. AppxS. According to Maatita
"the depth of the tread, ... involves no 'particular creativity' and is often selected
(AppxS) and since the ordinary designer has "discretion as to what may be included
within those portions and still remain within the claim scope" Maatita argued that it
did not force a designer to resort to conjecture. AppxS-6 (Board noting that Maatita
argued "a designer having 'some discretion as to how to implement a given claimed
design' does not rise to the level offorcing a designer to resort to conjecture."). 6 Thus,
according to Maatita, the requirements of 35 U.S. C. 112 were satisfied by his figures
"discretion" of the designer in implementing the claimed design would, in fact, require
conjecture since the specification lacks exact terms that would enable an ordinary
article. Appx7. The Board emphasized that the first paragraph of Section 112
requires "full, clear, concise and exact terms to enable any person skilled in the art" to
make and use the invention, yet it found such clarity and exactness to be missing here.
6
See also Appx104 (Maatita argued that "the fact that a designer has some
discretion as to how to implement a given claimed design" does not require "any
conclusion that cot!fecture must be undertaken to understand the design.").
10
Appx6 (citing 35 U.S.C. 112, ~ 1) (emphasis in original). The Board was
unpersuaded by Maatita's argument that the tread depth in shoe design required no
particular creativity and was selected based on functional considerations. To that end,
the Board found the claimed surfaces lack the exactness and clarity of a written
are flat, concave, or convex. Appx7. That is, the two-dimensional plan view
presented in Maatita's figures was simply inadequate to clearly define the scope of the
shoe bottom. Since multiple different distinct designs can result when applying
did the Board find the disclosure failed to enable the claimed design, but that "same
lack of clarity and detail also makes the scope of the claim indefinite under 35 U.S. C.
The Board properly determined that Maatita's design claim for a "Shoe
Bottom" in the '677 application is unpatentable under 35 U.S.C. 112 because the
drawings, which disclose only a two-dimensional plan view of the claimed design:
(i) lack sufficient detail to enable an ordinary designer to make the design on a three-
dimensional shoe bottom and (ii) fail to inform the ordinary designer and public of
11
There is no dispute that Maatita intends his claimed design to be applied to a
dimensional plan view of his design that does not enable an ordinary designer to make
shoe bottom. Since there are a wide variety of possible configurations of the design
determine which design is actually claimed. In fact, the Examiner illustrated examples
shoe bottom.
Maatita does not dispute that his claim reads on each of the examples
illustrated by the Examiner, but he argues that his claim is simply broad and he is
entitled to claim his invention broadly. But Section 112 of the Patent Act requires
more from his disclosure. Maatita's disclosure must enable his claimed design across
its full breadth. That means an ordinary designer looking at Maatita's disclosure must
Maatita's two-dimensional plan view drawings do not show a designer how to apply
12
at Maatita's two-dimensional drawings would be forced to guess which design (out of
bottom, the disclosure does not adequately enable one to make the claimed design as
That same lack of clarity resulting from Maatita's inadequate disclosure is also
the reason his claim is indefinite under Section 112, second paragraph. Because an
shoe bottom, the precise scope of his claim cannot be determined with sufficient
clarity to satisfy Section 112, second paragraph. Again, Maatita does not dispute that
shoe bottom designs. He simply argues that he is entitled to a single claim that covers
all of them. Not only are Maatita's two-dimensional plan view drawings inadequate to
clearly disclose the scope of his claim, but the fact that he seeks to cover many distinct
designs with a single ambiguous claim conflicts with the rule that design patents can
only have a single claim covering a single distinct design. If Maatita sought patent
coverage for the many distinct designs that can be imagined from his drawings, he
could provide drawings of each design and submit them in separate applications.
Instead, Maatita seeks to circumvent that rule by submitting a vague claim that causes
confusion as to which design his claim actually covers. That type of claiming is
13
Thus, the Board properly determined that Maatita's disclosure failed to provide
enough detail to enable the claimed invention under 35 U.S.C. 112, ~ 1, and also
IV. ARGUMENT
A. Standard of Review
On appeal, Maatita must show that the Board committed reversible error. In re
Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). Legal conclusions are reviewed de novo
and fact findings are reviewed for substantial evidence. In re Gartside, 203 F.3d 1305,
1315-16 (Fed. Cir 2000); see also In re DBC, 545 F.3d 1373, 1377 (Fed. Cir. 2008).
factual inquiries. See Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361, 1365 (Fed. Cir.
1997) (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)); see also Alcon Research Ltd. v.
Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014) (whether a claim is enabled under 35
U.S.C. 112 is a question of law that may be based on underlying fact findings).
This Court upholds the Board's fact findings if substantial evidence in the
record supports them. Gartside, 203 F.3d at 1315-16; see also In re Alonso, 545 F.3d
1015, 1019 (Fed. Cir. 2008). Substantial evidence is "such relevant evidence as a
reasonable mind might accept as adequate to support" the conclusion reached. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). And it is "something less than the
weight of the evidence but more than a mere scintilla of evidence." In re Kotzab, 217
F.3d 1365, 1369 (Fed. Cir. 2000). "[W]here two different, inconsistent conclusions
14
may reasonably be drawn from the evidence in record, an agency's decision to favor
one conclusion over the other is the epitome of a decision that must be sustained
upon review for substantial evidence." In re Jollry, 308 F.3d 1317, 1329 (Fed. Cir.
2002).
construction, which is a question oflaw. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
novo, during prosecution claims are given their "broadest reasonable interpretation,"
consistent with the specification which this Court reviews to determine whether it is
reasonable. See In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). See also Secure
Axcess, LLC v. PNC Bank National Association, 848 F.3d 1370, 1382, n.7 (Fed. Cir.
A design patent may be obtained for a "new, original and ornamental design
title 35. 35 U.S.C. 171. The design may be embodied in an entire article of
manufacture or only a portion thereof. In re Zahn, 617 F.2d 261, 267 (CCPA 1980).
The subject matter of a design patent may relate to the surface ornamentation applied
at 268. See also MPEP 1502 (citing Zahn). As the Supreme Court phrased it, "[a]
15
article to which it may be applied, or to which it gives form."' Samsung Electronics Co.)
Ltd v. Apple Inc., 137 S. Ct. 429 (2016) (citing Gorham Co. v. White, 82 U.S. 551, 525
(1871)).
A design patent can contain only a single claim, which must be "to the
ornamental design for the article (specifying name) as shown, or as shown and
described." 37 C.F.R. 1.153(a) ("More than one claim is neither required nor
design, it is well setded that it cannot include more than one claim. In re Rubitifield,
270 F.2d 391, 396 (CCPA 1959). And, if a single design application or patent
single inventive concept. Id. ("The fact that it may be permissible ... to illustrate
more than one embodiment of a design invention does not require or justify more
than one claim. Such embodiments can be presented only if they involve a single
article "as shown" or "as shown or described" in drawings. 37 C.F.R. 1.153 (a).
That is, the scope of a design claim is limited by the drawings disclosed. See In re
Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ("Design patents have almost no scope.
[They are] limited to what is shown in the application drawings."). The drawings of a
design patent also provide the description of the invention. In re Daniels, 144 F.3d
1452, 1456 (Fed. Cir. 1998). Solid lines in drawings show the claimed design, whereas
16
broken lines are generally not part of the claimed subject matter. See Zahn, 617 F.2d at
Design patents are subject to the same statutory requirements as utility patents,
including enablement and definiteness. See 35 U.S.C. 171. 8 Section 112 of the
Patent Act, which also applies to design patents under Section 171, states:
See 35 U.S.C. 112, ,-r,-r 1-2 (emphasis added). Thus, as recited in the flrst and second
paragraphs of Section 112, a design claim -like all patent claims -must be: (i) enabled
7
Broken lines can be used to disclose structure that is not part of the claimed
design but to show environment, including any portion of an article of manufacture in
which the design is embodied that is not part of the claimed design. In re Blum, 3 74
F.2d 904, 907 (CCPA 1967); MPEP 1503.02 (III) (citing Zahn). When broken lines
are used, the speciflcation should include a statement indicating the purpose of the
broken lines and that they are not part of the claimed design. See MPEP 1503.01 (II).
8
35 U.S.C. 171 states "[t]he provisions of this title relating to patents for
inventions shall apply to patents for designs, except as otherwise provided."
17
and (ii) definite. See 35 U.S.C. 112, ~~ 1 and 2. As discussed further below, Maatita
Under Section 112, "[t]he specification must enable one of ordinary skill in the
Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1355 (Fed.
Cir. 2012)(citation omitted); see also Sitrick v. Dreamworks, ILC, 516 F.3d 993, 999 (Fed.
Cir. 2008); In re Wands, 858 F.2d 731, 736-7 (Fed. Cir. 1998). In the design context,
that means "[a] design patent must disclose the configuration and complete
appearance of the article in which the design is embodied so fully, clearly and with
such certainty as to enable those skilled in the art to make the article without being
forced to resort to conjecture." See Philco Cotp. v. Admiral Cotp., 199 F. Supp. 797, 801
(D. Del. 1961) (citing Ex parte Salsbury, 38 U.S.P.Q. 149 (Comm'r Pat. 1938); Ex parte
Sweenry, 123 U.S.P.Q. 506 (BPAI 1959);]ames E. Tompkins Co. v. New York Woven Wire
9
Enablement and definiteness overlap more in the design context than they
might in the context of a utility patent. That is, "since the drawing disclosure and any
narrative description in the specification are incorporated into the claim by the use of
the language 'as shown and described,' any determination of the scope of protection
sought by the claims is also a determination of the subject matter that must be
enabled by the disclosure." See MPEP 1504.04 (I)(A) (citing Philco and Salsbury to
explain "if the appearance and shape or configuration of the design for which
18
Further, "the full scope of the claimed invention must be enabled." See Sitrick
v. Dreamworks, ILC, 516 F.3d 993, 999 (2008) (citing Auto. Techs. Int'4 Inc. v. BMW of
N Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007)). The "rationale for this statutory
requirement is straightforward," i.e., "[e]nabling the full scope of each claim is 'part of
the quid pro quo of the patent bargain."' Id. (citing AK Steel Cotp. v. Sollac, 344 F.3d
1234, 1244 (Fed. Cir. 2003)). The same rationale applies in the design context. See
Philco Cotp., 199 F. Supp. at 801 ("Sufficient disclosure has been said to be the quid
pro quo for the limited monopoly granted by the government. It is necessary so that
those skilled in the art may learn the invention and practice it when the period of
monopoly is over.") (citing Universal Oil Products Co. v. Globe Oil & Refining Co., 322
U.S. 471 (1944)). Thus, "a patentee chooses broad claim language at the peril of
losing any claim that cannot be enabled across its full scope of coverage." MagSil
Cotp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012).
claim for a design as applied to a three-dimensional article, but his disclosure only
provides a two-dimensional view of his design. As the examiner and Board found,
19
Maatita's two-dimensional plan view drawings fail to show an ordinary designer how
without having to resort to conjecture. Appx7 ("We are not convinced that allowing a
implement the claimed design."); Appx130 ("Appellant's disclosure does not enable
even one application of the design in a way that would inform the public of his
invention. The reader of this claim cannot know what the shoe bottom would look
article (e.g., a print on a flat surface) his existing drawings would sufficiently enable an
ordinary designer across the full scope of such a claim. But that is not what Maatita
surface characteristics impacting the visual impression of the design. And, for a
Gorham Co. 81 U.S. at 525. That means for Maatita's design to be patentable, his
20
Maatita argues that he intends his claim to encompass the multiple examples of
18 ("In fact, the Examiner himself even articulated several different ways in which the
design could be implemented."); Appx4-5 (Recognizing that Maatita "admits that the
claim covers multiple embodiments."); see also Appx104. But as the Examiner
ordinary designer would not know how to make the design. Appx118; Appx121-122.
Simply put, Maatita's disclosure fails to sufficiently inform the public of, and enable,
the claimed design and thus fails to serve the important quid pro quo policy of the
The problem lies with Maatita's figures, which simply show a two-dimensional
plan view of his design that can be construed in a variety of ways when an ordinary
Examiner illustrated (at Appx4) and the Board found, "the claim lacks the exactness"
required by the disclosure because "it is unclear whether the claimed surfaces are flat,
dimensional plan view of his design, Maatita's disclosure does not clearly delineate
conjecture" to determine which of the many possible distinct designs is actually being
21
claimed. See Appx123 ("[A] designer of ordinary skill in the art is forced to add his or
her own ideas beyond what is understandable in the drawing disclosure."). As the
Examiner found, "any number of markedly different, and patentably distinct, designs
no person of ordinary skill would have any idea if the design he achieved was in fact
required, the disclosure 10 does not enable an ordinary designer to make the claimed
invention as required by Section 112, first paragraph. See Philco Corp. v. Admiral Corp.,
199 F.Supp. at 801 ("A design patent must disclose the configuration ... so fully,
clearly and with such certainty as to enable those skilled in the art to make the article
without being forced to resort to conjecture."); see a/soAK Steel Corp., 344 F.3d at 1244
(The "enablement requirement is satisfied when one skilled in the art, after reading
experimentation.").
10
Maatita has only provided a drawing with single two-dimensional view, but at
the same time, seeks a design as applied to a three-dimensional article. The Agency's
regulations make clear that "[t]he design must be represented by a drawing ... and
must contain a sufficient number of views to constitute a complete disclosure of the
appearance of the design." 37 C.F.R. 1.152. Not only does Maatita's application fail
to satisfy Rule 152's drawing requirement, but that deficiency also illuminates why
Maatita's application does not satisfy 35 U.S.C. 112.
22
Notably, Maatita does not dispute that the two-dimensional plan view of his
design shown in his figures can be construed in a wide variety of ways when applied in
the three-dimensional context (e.g., with varied tread depths and surface heights as the
different ways in which the design could be implemented."). Nor does Maatita
dispute that he seeks to have his claim cover the various patentably distinct designs
that the Examiner illustrated as possible interpretations of his claim. See, e.g., AppxS
(Board noting that Maatita "does not refute that the claim covers the Examiner's
various depicted embodiments, and does not refute that the covered embodiments
may be patentably distinct.") (citing Appx104). Instead, Maatita asserts that the two-
dimensional plan view disclosure of his design is good enough because he is simply
claiming his design broadly. See, e.g., Br. at 10 (asserting the Board "was obligated to
presume that only the features shown by Maatita in his drawings constituted his
invention."); Appx104 (asserting "a patent applicant has the right to exclude features
In Maatita's view, the Agency incorrectly used Section 112 to force him to
unnecessarily narrow his claim. Br. at 17 ("Maatita was not required by the Patent
Statute to include additional features, which he did not intend to be part of his
claimed design, in his drawings."). But that is not the reason for the Agency's
rejection. Contrary to Maatita's argument, he is not free to define his invention with
uncontrolled breadth, i.e., with a single claim covering multiple distinct designs. See In
23
re futbitifield, 270 F.2d at 396 ("no useful purpose could be served by the inclusion of
more than one claim in a design application or patent."); see also 37 C.F.R. 1.153(a)
("More than one claim is neither required nor permitted."). Further, while Maatita
may seek to claim his invention broadly, such a claim strategy carries with it a
responsibility to provide a disclosure that enables his claim across its full scope.
MagSil Corp., 687 F.3d at 1380-81 ("a patentee chooses broad claim language at the
peril of losing any claim that cannot be enabled across its full scope of coverage.").
Maatita also erroneously alleges that "no finding was made below that 'any
person skilled in the art' could not make Maatita's design for a shoe bottom" or "that
such a person would be incapable of producing at least one embodiment that would
result in the illustrated combination of design features." Br. at 18. But the Examiner
expressly stated "that one of ordinary skill would not be able to produce the presently
claimed design" and that it "could not be produced unless one of ordinary skill adds
articulated several different ways in which the design could be implemented," see Br. at
18, the Examiner's illustration of multiple possible distinct embodiments was not to
show the claim was sufficiently enabled, but to show the level of conjecture that
shoe bottom relying on his minimal two-dimensional plan views in the disclosure. See
24
Appx123 (explaining that various interpretations of the claim were demonstrated to
show that "[n]one of the articulated interpretations are enabled by the disclosure, and
the claim scope cannot encompass subject matter that does not enable what is
designs could result from Maatita's single two-dimensional plan view disclosure, and
actually claimed in order to make it. As the Examiner explained, the fact that
Maatita's "non-specific ... disclosure forces one of ordinary skill to use his own
imagination to complete the design" is conclusive evidence that the claim is not
simply fails to give a clear and distinctive appearance of his claimed three-dimensional
shoe bottom design. See Gorham Mfg. Co., 81 U.S. at 525 (A patentable design "gives a
To be clear, the issue is not whether an ordinary designer could make the
various distinct designs exemplified by the Examiner, but whether that designer would
know which design to select out of many distinct possibilities that are being claimed in
order to make it. As the Examiner and Board found, because an ordinary designer in
this case would have to resort to conjecture (or speculate) to determine which design
is actually being claimed, that designer would not be enabled to make the claimed
design. See Phi/co, 199 F. Supp. at 801 ("A design patent must disclose the
25
configuration and complete appearance of the article in which the design is embodied
so fully, clearly and with such certainty as to enable those skilled in the art to make the
article without being forced to resort to conjecture."); see also AK S tee! Cotp., 344 F. 3d
at 1244 (The "enablement requirement is satisfied when one skilled in the art, after
reading the specification, could practice the claimed invention without undue
experimentation.").
plurality of patentably distinct designs conflicts with the single claim requirement for
design patents. That is, if Maatita wishes to seek design coverage for each of the
many patentably distinct designs that could be imagined from his two-dimensional
them in a single design application, but must instead disclose and claim each one
individually in separate applications. See, e.g., Rubinjield, 270 F.2d at 396 ("no useful
purpose could be served by the inclusion of more than one claim in a design
application or patent."); see also 37 C.P.R. 1.153(a) ("More than one claim is neither
required nor permitted."). And, Maatita would be required to disclose his multiple
distinct inventions with sufficient clarity to enable each one, which he has not done.
The USPTO bears responsibility for testing claims for definiteness prior to
issuance. See, e.g., In re Zlet~ 893 F.2d 319, 321-22 (Fed. Cir. 1989). Thus, when
26
applying 112 during examination of a patent application, the Agency carries an initial
procedural burden of presenting a prima facie case that a pending claim is indefinite.
Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007) ("In the prosecution of a
patent, the initial burden falls on the PTO to set forth the basis for any rejection, i.e., a
prima facie case."); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden, on review of the prior art or on any other ground,
As the first step in the indefiniteness analysis, the Agency determines the scope
of the claims. See Zleti_; 893 F.2d at 321 (discussing generally claim interpretation
during patent examination). The scope of the claims are determined "not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
skill in the art."' Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane)
(citation omitted). In the context of designs, the claim "is limited to what is shown in
the applications drawings." See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ("The
claim at bar, as in all design cases, is limited to what is shown in the application
drawings."). See also 37 C.P.R. 1.153 (a). Thus, when construing a design claim, the
11
See, e.g., Blumenthal Distrib., Inc. v. Exec. Chair, Inc., 2010 WL 5980151, at *5
(E.D.N.Y. Nov. 9, 2010) (citing Odd:tJn Prods., Inc. v. Just Tqys, Inc., 122 F.3d 1396,
1405 (Fed. Cir. 1997). See also Egyptian Goddess. Inc. v. Swisa, Inc., 543 F.3d 665, 679
(Fed. Cir. 2008) ("Given the recognized difficulties entailed in trying to describe a
27
Applying the broadest reasonable interpretation of a claim, the Agency
establishes a prima facie case of indefiniteness with a rejection explaining how the
metes and bounds of a pending claim are not clear. See In re Packard, 751 F.3d 1307,
1310 (Fed. Cir. 2014) (per curiam); see also Ex Parte Mfyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential) ("if a claim is amenable to two or more plausible claim
define the metes and bounds of the claimed invention by holding the claim
unpatentable ... as indefinite")P In the context of a design, "if the appearance and
which incorporates the visual disclosure, fails to particularly point out and distinctly
claim the subject matter the inventor(s) regard as their invention, in violation of the
design in words, the preferable course ordinarily will be for a district court not to
attempt to 'construe' a design patent claim by providing a detailed verbal description
of the claimed design.").
12
The Board's decision in M!Jazaki, which remains Board precedent, provides an
example in which the Board affmed an indefiniteness rejection of a claim containing
words or phrases whose meanings were unclear, i.e., the approach approved in
Packard.
28
opportunity to respond to the examiner by amending the claims or by providing
evidence or explanation that shows why the claims are not indefinite. Packard, 751
F.3d at 1311-12. The Agency plays an important role in ensuring that proposed
patent claims are clear, unambiguous, and drafted as precisely as the art allows. Claim
clarity keeps the rights afforded by a patent commensurate with the invention's
contribution to the art Packard, 751 F.3d at 1313. Interpreting the claims as broadly
as reasonable during prosecution allows the Agency to fulfill this important role. See
In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (claims are given their broadest
the claims at the application stage''); Zle~ 893 F.2d at 321 ("during patent
the claim language, "the applicant may 'amend his claims to obtain protection
commensurate with his actual contribution to the art."' In re Yamamoto, 740 F.2d
1569,1571 (Fed. Cir. 1984) (quoting In re Prater, 415 F.2d 1393, 1405 (CCPA 1969)).
Thus, the broadest reasonable interpretation standard ensures that claims, once fixed
and issued, are as "precise, clear, correct, and unambiguous" as possible. Zlet~ 893
F.2d at 322.
Here, the Board properly rejected Maatita's claimed design as indefinite under
Section 112, second paragraph. Importantly, a design patent -like a utility patent- is
29
a right that rewards inventors with exclusivity and "like any property right, its
boundaries should be clear." See Festo Cotp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 730 (2002); see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 373
(1996) ("It has long been understood that a patent must describe the exact scope of
identifies ways "a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear
in describing and defming the claimed invention, and thereafter the applicant fails to
provide a satisfactory response," it "can properly reject the claim as failing to meet the
statutory requirements" of Section 112. Packard, 751 F.3d at 1311. That is precisely
what happened here: the Examiner issued an indefiniteness rejection identifying why
the scope of Maatita's design claim had not been made clear by his drawings showing
only a two-dimensional plan view of his design. Yet Maatita failed to provide any
additional drawings with additional perspective views to clearly define the scope of his
simply argued, as he does now, that he is entitled to claim his design broadly and his
limited two-dimensional disclosure is good enough. Br. at 22-23 (asserting "that 'the
specific depth and contour' was not a limitation of his claim."); Appx131 (Maatita
13
Even if Maatita were somehow unable to provide additional drawings in the
same application due to, e.g., new matter concerns, he could have flied a new
application with a clear disclosure of his invention.
30
argued (at Appx104) that "just because certain design features can be added to the
Section 112 requires a level of clarity and informed disclosure that Maatita's
explains, "if the appearance and shape or configuration of the design for which
disclosure, then the claim, which incorporates the visual disclosure, fails to particularly
point out and distinctly claim the subject matter the inventor(s) regard as their
showing only a two-dimensional plan view of his design- would not know which
version of a three-dimensional shoe bottom article to apply his design. That is,
Maatita's claimed design could take the form of any of multiple distinct designs (each
design of many possibilities is claimed and thus, would not clearly understand the
claim's scope. Appx134 (noting the "~Jack of definition in what [Maatita] is actually
claiming does not allow a patent examiner, a court, or the public to sufficiently
31
Contrary to Maatita's argument, the Agency has not rejected his claim as
indefinite under Section 112 to force him to narrow the scope of his protection.
Rather, as the Examiner explained, the indefiniteness rejection seeks to ensure there is
sufficient clarity so the public can discern the precise scope of Maatita's claim from
his disclosure. See Appx134. Without such clarity, the patent system will simply not
work. 14 Competitors, the public and courts will not be able to clearly understand the
See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (A claim is
skilled in the art about the scope of the invention."); Festo Corp., 535 U.S. at 730) (A
patent confers the limited right to exclude and "like any property right, its boundaries
should be clear.").
speculate (or resort to conjecture) it "moves the claimed design from the realm of
being permissibly broad to the realm of being non-enabled and indefinite." Appx7.
14 See Universal Oil Products Co., 322 U.S. at 484 ("But the quid pro quo [for patent
exclusivity] is disclosure of a process or device in sufficient detail to enable one skilled
in the art to practice the invention once the period of the monopoly has expired; and
the same precision of disclosure is likewise essential to warn the industry concerned of
the precise scope of the monopoly asserted.").
32
D. Maatita's Remaining Arguments Fail
Maatita asserts that Ex Parte Kazifman, 2012-003545 (PTAB March 14, 2014), 15
"is directly on point here." Br. at 10-16. But Kaufman, is a non-precedential Board
decision that does not bind any other Board panel, and certainly not this Court. 16
Thus, the Board panel that issued the decision under review in this appeal was not
Further, Maatita never argued Kaufman before the Board. See Appx98-106.
While Maatita raised Kaufman before the examiner and listed it as a related case, he did
not argue it in his Board brief. Id. Thus, it is not surprising that the Board did not
address Kaufmann in its decision, see Br. at 4 (alleging the Board "completely ignored
the Kaufmann decision."), because it was not required to do so. See 37 C.P.R.
41.37(c)(1)(iv) ("[A]ny arguments or authorities not included in the appeal brief will
be refused consideration by the Board[.]"); In re Lovin, 652 F.3d 1349, 1356-57 (Fed.
15
Kaufmann can be found at: https://portal.uspto.gov/pair/PublicPair.
16
As the Board's standard operating procedures (SOPs) explain, "a routine
opinion is not binding authority" on any other Board panel. See SOP 2, rev. 9 at 4.
Available at. https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-
dated-9-22-2014.pdf; see also Fed. Cir. R. 32.1 (d) ("The court will not consider non-
precedential dispositions of another court as binding precedent of that court unless
the rules of that court so provide.").
33
Cir. 2011). And arguments not made before the Board are also waived on appeal to
this Court. See In re Watts, 354 F.3d at 1367 ("[I]t is important that the applicant
challenging a decision not be permitted to raise arguments on appeal that were not
the rejections and arguments made by Maatita are similar in both cases, Katifman is
distinguishable because, there, the Board found that the Examiner had not established
that the disclosure failed to enable an ordinary designer to make the claimed design.
See Katifman, 2012-003545 at 4 (finding the "Examiner has not established that
one to make and use the claimed invention."). In contrast, here, the Examiner
dimensional plan view drawings. And, Maatita conf1rmed before the Board that he
intends his claim to cover any one of the multiple patentably distinct designs that the
Examiner demonstrated. Thus, in this case - unlike Katifman - the Board found the
Examiner had established a lack of enablement. See, e.g., Appx6 (Agreeing with the
Examiner that "the curvilinear shapes of the different surfaces of the claimed shoe
bottom design cannot be determined with any specificity, including whether each is
convex or concave, and because the single view [drawing] does not adequately reveal
the relative depths and three-dimensionality between the surfaces provided, the
34
Specification does not reveal enough detail to enable the claimed shoe bottom.").
Therefore, Kaufman has no impact on the Board's determination that Maatita's design
112.
Finally, Maatita also argues that "various [other] shoe bottom patents with
single views include features strikingly similar to the features of the Maatita
application" and this somehow should justify a reversal of the Board's decision under
review here. Br. at 14-16. But "it is well settled that the prosecution of one patent
McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (citing In re Wertheim, 541 F.2d 257,
264 (CCPA 197 6) (holding that "[i]t is immaterial in ex parte prosecution whether the
same or similar claims have been allowed to others.")). See also In re Gyurik, 596 F.2d
1012, 1018 n. 15 (CCPA 1979) ("this court does not consider allowed claims in other
applications or patents"); In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir. 2001) ("The
Board must decide each case on its own merits [and] the PTO's allowance of ... prior
35
IV. CONCLUSION
Respectfully submitted,
/s I William La Marca ~
October 10, 2017 Nathan K. Kelley
Solicitor
Thomas J. Krause
Deputy Solicitor
William La Marca
Amy J. Nelson
Associate Solicitors
36
RULE 32(a)(7)(C) CERTIFICATE OF COMPLIANCE
I certify pursuant to Fed. R. App. Proc. 32(a)(7) that the foregoing BRIEF FOR
complies with the type-volume limitation required by the Court's rule. The total
number of words in the foregoing brief, excluding table of contents and table of
37
CERTIFICATE OF SERVICE
I hereby certify that on October 10, 2017, I electronically filed the foregoing
AND TRADEMARK OFFICE, using the Court's CM/ECF filing system. Counsel
for the Appellant was electronically served via e-mail per Fed. R. App. P. 25 and Fed.
/s I William La Marca
William La Marca
Office of the Solicitor