A Teapot Steeped with Dicta: An Update on In re Maatita and Design Definiteness

Disclosure: The authors of this article represented the Applicant, PUMA SE, in the ex parte appeal before the Patent Trial & Appeal Board in Ex parte Silva, Appeal 2024-000238 (P.T.A.B. September 27, 2024), which is discussed below.

Divisive at the time, the following statement by the U.S. Court of Appeals for the Federal Circuit sets forth the reasonable certainty standard, upon which the definiteness requirement of 35 U.S.C. § 112 is to be assessed in the context of design patents:

“[A] design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure. . . . So long as the scope of the invention is clear with reasonable certainty to an ordinary observer, a design patent can disclose multiple embodiments within its single claim and can use multiple drawings to do so.”

In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018).

This flexible approach to definiteness embodies the idea that designs can be depicted in a variety of ways while still being reasonably understood by the ordinary observer. The standard also strikes a balance between allowing infringement and patentability to be assessed and allowing applicants to claim their design in the way that best reflects how that design is likely to be viewed in the real world, or focusing on what the applicant deems to be the most important aspects of their design. While an applicant may choose to claim three-dimensional aspects of design from one or more points of view, there is no requirement that every detail must be fully shown in multiple views from a variety of perspectives so that its three-dimensional nature can be exactly ascertained.

CAFC Example Inserts Uncertainty

While it would seem abundantly clear from the excerpt above that the reasonable certainty standard should control for all designs, the Federal Circuit could not help but muddy the waters by providing its infamous teapot example:

“[W]here the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration. The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective.”

In re Maatita, at 1378. In this example, the Federal Circuit appears to suggest that the type of article must be considered when evaluating definiteness and that articles traditionally considered three-dimensional in nature might somehow have a higher standard for definiteness than articles that are traditionally considered more two-dimensional in nature (conveniently ignoring the fact that rugs and placemats can have variable thickness in a third dimension). This higher standard can be satisfied by providing additional figures of three-dimensional articles that allow the three-dimensionality to be exactly understood.

Or at least that is how the U.S. Patent and Trademark Office (USPTO) has interpreted the teapot example in an attempt to limit Maatita’s reach. USPTO, Federal Circuit Decisions: Maatita, Curver, and SurgiSil (2023), available here.

But this is not what Maatita says. Maatita instead states “[t]he design for an entire shoe or teapot . . . could not be adequately disclosed with a single, plan- or planar-view drawing.”  Maatita, at 1378 (emphasis added). All this means is that a design for an entire three-dimensional object is not always capable of being understood using one single two-dimensional view, not that parts of the design could not be understood using a single or multiple two-dimensional views. For example, in Maatita’s claim for a shoe bottom, the claim would not cover aspects of the midsole and upper that are not shown so that the entire shoe would be claimed. Instead, the claim is limited in scope to just the portions of the shoe that are disclosed. The result is similar to portion claims, wherein the non-disclosed or disclaimed portions form no part of the claimed design.

And so, the divisiveness continues as examiners rely on the USPTO’s current guidance on Maatita that ignores the Federal Circuit’s broader instruction—reasonable certainty is all that is required to satisfy the requirements of 35 U.S.C. § 112, not the specific type or quantities of views the Applicant has chosen to use.

Hope Ahead

But clarity is forthcoming, and the Patent Trial and Appeal Board (PTAB)has slowly been chipping away at this limited reading. In Ex parte Chioccioni, the Board reversed a § 112 rejection for a three-dimensional design of an ice cream product that allegedly failed to provide sufficient detail as to the complex “surface undulations” disposed below the claimed container’s top lip and the relative height of the “rosette peaks” extending therefrom. See generally, Ex parte Chioccioni, Appeal 2018-007742, (P.T.A.B. Mar. 24, 2023); see also U.S. D892,428, FIGS. 1 and 6 (annotated below) .

The Examiner argued that the claim was indefinite because the exact appearance of the claimed design—the relative heights of the rosette peaks—could not be understood and that “because the design comprises complex undulations, the bar to satisfy § 112 requirements is high.”  See Ex parte Chioccioni, at pp. 3 and 5 (internal quotes removed). This reasoning mirrors the examples provided in the USPTO’s guidance on Maatita.

Yet the Board disagreed and found that the level of detail required to satisfy the § 112 inquiry is not determined by type or quantity of figures chosen, but as “a function of whether the claimed design . . . is capable of being defined by [those] drawing(s).”  Id., at p. 4 (quoting In re Maatita, 900 F.3d at 1378) (internal quotes removed). “[P]er the Federal Circuit’s holding in Maatita, the question is not whether the parameters of these dimensional details could have been been [sic] more precisely disclosed in additional drawing views. Rather, the correct question is whether these precise parameters are necessary to sufficiently inform an ordinary observer of the scope of the claim.”  Id., at pp. 4 and 5.

Now the Board has moved even further away from the USPTO’s current guidance on Maatita. In Ex Parte Silva¸ the Board again reversed a § 112 rejection for a three-dimensional design of an entire shoe, where a central region of the outsole was only visible from a single bottom plan view, while the remaining portions of the shoe where visible in two or more views. See generally, Ex parte Silva, Appeal 2024-000238 (P.T.A.B. September 27, 2024).

Examiner’s Answer, U.S. 29/753,645, p. 4 (August 24, 2023) (annotating FIG. 7 to show the central region of the outsole that was allegedly indefinite and non-enabling).

In this case, the Examiner tried to distinguish the claim from the facts of Maatita by arguing that Maatita’s reasonable certainty standard is limited to only single-figure designs where three-dimensionality forms no part of the claim whatsoever. See Final Office Action, , U.S. 29/753,645, p. 6 (October 17, 2022) (“The facts of [Maatita] relate to a single plan view of an outsole presented without shading or contour lines having any indication of form or depth, as well as no other sides of the design shown, and therefore no indication of three-dimensionality. Its disclosure is entirely two-dimensional in nature with no suggestion of three-dimensionality within the drawing disclosure.”). Relying on the Federal Circuit’s statement that a design for an entire shoe or teapot could not be adequately disclosed in single plan view, the Examiner reasoned that “the court is specifically distinguishing designs that are inherently three-dimensional as not capable of being defined by a two-dimensional plan, or planar, view.”  Id., p. 7.

This clearly differs from the claim at issue, which includes some portions that were shown in multiple figures to allow their three-dimensional nature to be exactly ascertained, while the central region of the outsole was only shown in one figure, and all of which included stippling to further specify the three-dimensional shape.

The Examiner suggested that such “hybrid” style claiming as used here, where some structures are shown in multiple views and others are shown in a single view, would be too complex, if not impossible, to judge. Examiner’s Answer, p. 8. The Board disagreed, finding there to be “no legal basis for two-dimensional design claims being distinct from three-dimensional design claims, much less for applying different disclosure standards for the two,” and that a single design claim must be analyzed as a whole when “consider[ing] whether the overall disclosure provides reasonably certainty of the scope of the claim to one of skill in the art.”  Ex parte Silva, p. 6.

The Examiner also argued that Maatita was not seeking to cover three-dimensional aspects and that the Federal Circuit did not suggest that the various interpretations of Maatita’s claim (see figure below) were not covered. See Examiner’s Answer, p. 8. But again, the Board disagreed, finding that “Maatita’s claim covered multiple possible topographies of the shoe sole” as does Appellant’s claim, which is “not claiming anything other than what is disclosed.”  Ex parte Silva, pp. 4 and 5. Just as Maatita’s claim covered multiple distinct topologies, so too does Appellant’s claim.

While not specifically addressed by the Board, the Examiner also made the point that (improperly) interpreting Maatita to not cover three-dimensions is necessary for “upholding the fundamental definition of a design patent being to a single claim, which might include patentably indistinct embodiments, but not patentably distinct embodiments.”  Examiner’s Answer, p. 8. This reasoning conflates a single filing that specifically claims a multitude of potentially patentably distinct embodiments, where restriction would be appropriate, with a single generic claim that that can read on multiple different embodiments. There is nothing in the law that demands an applicant claim the narrowest version of what they are entitled to.

Instead, an applicant is free to select any such views that are illustrative of the perspective from which the design is to be observed, so long as those views provide reasonable certainty as to the scope of the claim. This reasonable certainty standard controls for all designs no matter the type of article of manufacture being claimed, or whether that article is traditionally seen as being two-dimensional or three-dimensional in nature. “While Maatita may allude to the possibility of such a difference, it does not make such a broad holding.”  Ex parte Silva, p. 6.

The Federal Circuit’s teapot is, and always has been, steeped with dicta.

Image Source: Deposit Photos
Author: MyraLypa
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