Before Dyk, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: A two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness requirements for a design patent.
Ron Maatita filed a design patent application containing a two-dimensional plan-view drawing of the bottom of an athletic shoe. During prosecution, the examiner rejected the claim directed to the drawing for failing the enablement and definiteness requirements of § 112. The examiner argued that the two-dimensional drawing does not adequately convey the depth and contour of the shoe bottom, thereby rendering the claim invalid. The Board affirmed the examiner’s rejections.
On appeal, the Federal Circuit held that the proper inquiry on an indefiniteness challenge is whether one skilled in the art, viewing the design as would an ordinary observer, would understand the scope of the design with reasonable certainty based on the claim and visual disclosure. Applying this standard, the Federal Circuit considered whether the claimed design was capable of being defined by a two-dimensional illustration. The Federal Circuit explained that the two-dimensional drawing clearly demonstrated the perspective from which the shoe bottom should be viewed to determine infringement, thereby leaving potential infringers no doubt as to how to determine infringement. Thus, the failure to disclose all depth choices would not preclude an ordinary observer from understanding the claimed design from a two-dimensional drawing. The Federal Circuit further explained that, in the context of design patents, there is very little difference between the concepts of definiteness and enablement. Accordingly, the Federal Circuit reversed the Board’s decision.