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In re Maatita

United States Court of Appeals for the Federal Circuit

August 20, 2018, Decided

2017-2037

Opinion

 [*1371]   [***1640]  Dyk, Circuit Judge.

This is an appeal from a rejection in initial examination of appellant Ron Maatita's design patent application covering the design of an athletic shoe bottom. The examiner rejected the application's single claim 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 Patent Trial and Appeal Board ("Board") affirmed the examiner's rejection. Because we find the Board misapplied § 112 in the design patent context, we reverse.

Background

On October 24, [**2]  2011, Appellant Ron Maatita ("Maatita") filed design patent application, No. 29/404,677 covering the design of an athletic shoe bottom. The application contained a single claim reciting "[t]he ornamental design for a Shoe Bottom as shown and described" and two figures showing a plan view of the claimed shoe bottom design. J.A. 28. Figure 1 is reproduced below:

 [*1372]  

J.A. 29. 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, 54 C.C.P.A. 1231 (C.C.P.A. 1967); MPEP 1503.02 (III). Figure 2, which  [***1641]  the '677 application described as a "second representative embodiment," differs from Figure 1 only in unclaimed design elements near the arch of the foot. J.A. 28.

On February 4, 2014, the examiner issued a first office action objecting to the application on the ground that the two embodiments were identical and only the unclaimed surrounding environment of the two figures was different. The examiner also rejected Maatita's design claim as failing to satisfy the enablement and definiteness requirements of 35 U.S.C. § 112, first and second paragraphs.1 In the examiner's view, the application's use [**3]  of a single, two-dimensional plan view to disclose a three-dimensional shoe bottom design left the design open to multiple interpretations regarding the depth and contour of the claimed elements, therefore rendering the claim not enabled and indefinite.

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900 F.3d 1369 *; 2018 U.S. App. LEXIS 23188 **; 127 U.S.P.Q.2D (BNA) 1640 ***; 2018 WL 3965892

IN RE: RON MAATITA, Appellant

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 29/404,677.

Disposition: REVERSED.

CORE TERMS

patent, drawings, indefinite, shoe, infringement, bottom, two-dimensional, embodiments, disclosure, skilled, ordinary observer, three-dimensional, designer, depth, single claim, specification, invention, disclose, figures, visual, reasonable certainty, inconsistencies, illustrated, planar-view, enabled

Patent Law, Claims & Specifications, Specifications, Description Requirement, Definiteness, Enablement Requirement, Business & Corporate Compliance, Patent Law, Infringement Actions, Design Patents, Anticipation & Novelty