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In re Maatita

United States Court of Appeals, Federal Circuit

August 20, 2018

IN RE: RON MAATITA, Appellant

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 29/404, 677.

          Steven E. Shapiro, Kim Shapiro Park and Lee, Los Angeles, CA, argued for appellant. Also represented by Joseph Gerald Swan, Joseph G. Swan, a Professional Corporation, Manhattan Beach, CA.

          William LaMarca, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Thomas W. Krause, Amy J. Nelson.

          Before Dyk, Reyna, and Stoll, Circuit Judges.

          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 exam- iner 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, 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:

         (Image Omitted)

         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 (C.C.P.A 1967); MPEP 1503.02 (III). Figure 2, which 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 para-graphs.[1] In the examiner's view, the application's use 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.

         On May 1, 2014, Maatita responded to the office action, amending the specification to clarify that Figure 1 and Figure 2 represented the same embodiment in different environmental settings. Maatita also argued that there was no enablement problem because "there is no specific allegation that one of ordinary skill would not be able to produce the claimed design, i.e., that such a person would be incapable of selecting an appropriate depth or contour that would result in the illustrated combination of design features." J.A. 55. Moreover, in Maatita's view, "[o]mission of certain design elements that potentially could have been included merely affects the breadth of the claimed design." Id. Thus, the single claim could cover multiple appropriate depth and contour choices without rendering the claim indefinite. Maatita also brought to the Examiner's attention Ex Parte Kaufman, Appeal 2012-003545, Serial No. 29/247, 378 (P.T.A.B. Mar. 14, 2014), [2] an earlier Board decision reversing enablement and indefinite rejections of a design patent application that, like Maatita's application, disclosed the design for a shoe sole in a two-dimensional, plan-view figure.

         On May 13, 2014, the examiner issued a final rejection, again rejecting the claim as not enabled and indefinite. The examiner prepared and included four three-dimensional renderings showing different implementations of Maatita's two-dimensional plan view. These ...


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