Monday, August 20, 2018

CAFC in Maatita : Because we find the Board misapplied § 112 in the design patent context, we reverse.

Of note:

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. See In re Rubinfeld,
270 F.2d 391, 396 (C.C.P.A. 1959); see also In re
Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993) (“[T]he
drawings depict three slight variations on a single basic
design . . . . No objection has been made to this not uncommon
practice.”). This principle is illustrated by Rubinfeld,
in which the disclosure included a first embodiment
(figures 1–4) showing a design of a floor waxer from
different angles, and a second embodiment (figures 5–8)
showing essentially the same floor waxer design, but with
the addition of side braces. 270 F.2d at 392, 394. It was
clear what the patent intended to cover since, as the court
noted, the braces in figures 5–8 could have simply been
shown with dotted lines as immaterial parts. Id. The
court therefore determined that the entire disclosure was
directed to the same “inventive concept” and could be
included within a single claim. Id. at 396.
On appeal, the government argues that we should assess
the indefiniteness of Maatita’s disclosure by employing
the same analysis used for obviousness-type double
patenting situations, in which multiple drawings are
submitted with a single application to illustrate multiple
embodiments and the examiner must compare the overall
visual impression of the submitted drawings to see
whether they are distinct. See MPEP 1504.05 (citing In re
Rubinfield, 270 F.2d 391 (CCPA 1959)). In the double
patenting context, differences between embodiments are
considered insufficient to patentably distinguish them if
the differences are de minimis or would be obvious to a
designer of ordinary skill in the art. Id. Such an analysis
is inappropriate here. Maatita did not provide multiple,
potentially conflicting drawings. Rather, he provided one
drawing, and the Board ruled that it is indefinite and
non-enabled under § 112.


In situations like this, where 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 planarview
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 planarview
drawing. Whether an article infringed would depend
on the perspective chosen to view the article, and a twodimensional
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. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938
WL 28182, at *2 (Com’r Pat. & Trademarks May 5, 1938)
(“It is recognized that flat articles can generally be sufficiently
illustrated by a single view.”). Such a claim, with a
single drawing, would cover all similarly designed rugs or
mats, even if one might have a low pile and the other a
high pile (for a rug) or might be woven or textured fabric
(for a placemat).


Because a designer of ordinary skill in the art, judging
Maatita’s design as would an ordinary observer, could
make comparisons for infringement purposes based on the
provided, two-dimensional depiction, Maatita’s claim
meets the enablement and definiteness requirements of
§ 112. We therefore reverse the decision of the Board.


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