Design Patents and Section 112
Introduction
Working with design patents can be enjoyable because they consist mainly of a drawing or set of drawings. There is some written description to be sure, but absent are the typical pages and pages of text usually found in utility patents. However, attractive drawings can be misleading. Despite the apparent simplicity of drawing figures and minimal text, design patents still must comply with the complex written description and claiming requirements set forth in 35 U.S.C. § 112, a statute designed primarily for utility patents but made applicable to design patents as well. Section 112 rejections are some of the most common rejections made by design patent examiners. Understanding how to effectively respond to these rejections requires an understanding of how section 112 relates to design patents, and how it is being interpreted by the courts, the Patent Trial and Appeal Board (PTAB), and the United States Patent and Trademark Office (USPTO).
The Statute
35 U.S.C. § 112 SPECIFICATION
(a) IN GENERAL. – The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) CONCLUSION. – The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The Four Distinct Requirements for Design Patents
There are four distinct requirements in section 112 applicable to design patents (a fifth “best mode” requirement [5 below] is not). Section (a) has two requirements. First, the specification shall contain a written description of the invention [1 below]. Second, the specification shall contain a written description of the manner and process of making and using the invention, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same [2 below]. Section (a) often is referred to as the enablement requirement, but importantly, it has a separate and distinct requirement for a “written description of the invention” as well.
(a) IN GENERAL. – The specification shall contain a [1] written description of the invention, and [2] of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and [5] shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Section (b) also has two distinct requirements. First, the specification shall conclude with one or more claims particularly pointing out the subject matter that the inventor or a joint inventor regards as the invention [3 below]. This is evaluated subjectively. Second, the specification shall conclude with one or more claims distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention [4 below]. This is evaluated objectively.
(b) CONCLUSION. – The specification shall conclude with one or more claims [3] particularly pointing out and [4] distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Understanding the Requirements in Section (a)
Section (a) requires a written description of both the invention and how to make and use the invention. These two requirements, while separate, are both overlapping and complementary.
The “written description of the invention” requirement ensures that a person skilled in the art would recognize that the inventor invented what is claimed. The test for sufficiency is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” In re Owens, (Fed. Cir. 2013) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
This “written description of the invention” requirement, as a practical matter, serves three purposes. First, it provides a limitation to claim interpretation because subject matter not described cannot be claimed. This limitation helps provides notice of what is properly claimed so prior art can be compared for patent validity and accused products can be compared for infringement, thereby preventing inventors from unfairly threatening competitors “by pretending that his invention is more than what it really is….” Evans v. Eaton, 20 U.S. 356, 434 (1822).
The second purpose is to define the subject matter originally filed so it can be determined whether later amendments constitute impermissible new matter. The key here is to prevent inventors from later claiming more than what they had actually invented or conceived at the time of filing the application. This purpose typically comes into play when deciding whether continuation applications are entitled to the priority filing date of the original application.
The third purpose is to complement and assist the enablement requirement. Before understanding how to make and use an invention, one must understand what the invention is, which is the purpose of the written description of the invention requirement. Ariad.
Finally, regarding the “how to make and use the invention” (enablement) requirement of Section (a), its purpose is to teach a person of ordinary skill how to make and use the invention after the patent term expires. Importantly, the requirement is directed to how to make and use the claimed design, and not how to make and use the underlying article to which the design applies.
The information satisfying these two requirements can be illustrated in a diagram. The blue circle below represents all the information conveyed by the application disclosure, including the drawing figures, written description, and appendix. This information must describe both what the invention is and how to make and use it. It also must support the current claim and any future claims.
Understanding the Requirements in Section 112(b)
Section 112 (b) also has two requirements. The first is that the specification shall conclude with one or more claims particularly pointing out the subject matter that the inventor or a joint inventor regards as the invention. The second is that the specification shall conclude with one or more claims distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The primary distinction between the two requirements is that the first requirement is subjective because it depends on what the inventor regards as the invention. The second is objective because it is evaluated by the standard for definiteness – whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art. The two requirements work together to ensure that that the scope of the claim is definite enough to meaningfully compare the claim to prior art and accused designs.
In the design patent context, an ongoing tension exists between the two requirements in section (b). Since a design patent can have only one claim, design patent applicants often search for ways to broaden the reach of the claim. Historically, this has been permitted to one degree or another by allowing an inventor leeway in particularly pointing out what the inventor regards as the invention. But this flexibility is limited by the “distinct claiming” requirement in section (b), which places objective constraints on what an inventor is allowed to do. This tug of war between the inventor’s subjective ability to point out the invention on their own terms and what is objectively permitted is an interesting and complex aspect of design patent law. The struggle began early and continues to evolve as patent authorities repeatedly change their view on where the boundary should be – sometimes allowing – and sometimes limiting – both new and old claiming techniques.
The two requirements in Section 112(b) also can be illustrated in a diagram. The white circle below within the blue circle represents the claim. Under subsection (b), the claim must both particularly point out what the invention is from all the information provided in the disclosure (shown by white color contrasting with blue color), and distinctly claim what the invention is (shown by the distinct border between the blue and white circles).
Distinguishing a Design Patent Illustration from a Utility Patent Illustration
The diagram in the preceding section illustrates a design patent where the white circle representing the claim is close in size to the blue circle representing the rest of the specification. That is because in a design patent, the drawings and written description are imported into the claim by use of the claim language “as shown and described.” The only blue subject matter left outside the white claim in design patent disclosures is matter not claimed, such as design features illustrated in broken lines, unelected embodiments, and figures in appendices.
Contrast the design patent diagram above with the diagram below, which visually represents a utility patent disclosure and claim.
In a utility patent application, the disclosure usually is much greater (or larger in size as shown above) than the claims because the claims do not import and incorporate the specification drawings and written description. Rather, the claims are interpreted in light of the specification. Since utility patents cover function, the disclosure must describe in detail the functional and operational aspects of the invention and provide support and explanation for the language used in the claims. The specification often includes detailed descriptions of various embodiments, technical details, specific components or processes, and experimental results. The disclosure needs to cover many possible variations and implementations to ensure broad coverage. Consequently, as shown above, the blue circle (disclosures) is much larger than the white circle (claims).
Procedure for Analyzing Compliance with Section 112
Before discussing the legal standards applicable to the four requirements, a brief word on procedure. According to the MPEP, the preferred method for determining whether a claimed design complies with Section 112 is to consider parts (a) and (b) in reverse order. Section 1504.04 I.A., states “[a]ny analysis for compliance with 35 U.S.C. 112 should begin with a determination of the scope of protection sought by the claims.” The reason for the reverse order is explained in In re Moore, 439 F.2d 1232 (CCPA 1971):
“It may appear awkward at first to consider the two paragraphs in inverse order but it should be realized that when the first paragraph speaks of ‘the invention,’ it can only be referring to that invention which the applicant wishes to have protected by the patent grant, i.e., the claimed invention. For this reason the claims must be analyzed first in order to determine exactly what subject matter they encompass. The subject matter there set out must be presumed, in the absence of evidence to the contrary, to be that ‘which the applicant regards as his invention.’”
Id. at 1046.
Despite this explanation and MPEP reference, as a practical matter, in design patent practice the analysis of all Section 112 requirements usually proceeds together at the same time. This is because the drawings and written disclosure are incorporated into the claim verbatim, and an inadequate disclosure also will usually mean an inadequate claim. MPEP 1504.04 I.A., describes the situation as follows:
“However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language “as shown and described,” any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure violates 35 U.S.C. 112(b) or (pre-AIA 35 U.S.C. 112, second paragraph), because it fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to (pre-AIA) 35 U.S.C. 112, the applicant) regards as the invention. Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of the design for which protection is sought.”
This merged approach is cited with approval in Maatita, where the Federal Circuit set out subsections (a) and (b) of Section 112 and stated:
Because design patent claims are limited to what is shown in the application drawings, see In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988), there is often little difference in the design patent context between the concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and enablement (whether the specification sufficiently describes the design to enable an average designer to make the design), see Ex Parte Asano, 201 U.S.P.Q. 315, 317 (B.P.A.I. 1978) (explaining that issues related to enablement were “generally the same as” issues concerning definiteness in the design patent context); MPEP 1504.04 (I)(A).
900 F.3d 1369, 1375
Considering the above, the typical introduction to an examiner’s section 112 rejection in the design patent context makes sense:
The claim is rejected under 35 U.S.C. 112(a) and (b), as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The scope of a claim is definite only when it is supported by an enabling disclosure. When the scope of protection sought exceeds what is enabling in the disclosure, the claim is indefinite.
For utility patents, the analysis proceeds differently. That is because the relationship between the claim(s) and the specification is different than in design patents. In utility patents, the four steps usually are analyzed independently because the claims are separate from the specification and are interpreted in light of the specification. Unlike design patents, the limitations in the specification are not imported or incorporated into the claims. In particular, the scope of the claims is not limited to the drawings shown in the specification. Therefore, a determination of one 112 requirement in a utility patent does not necessarily dictate the same result of another requirement.
Legal Standards Used for determining Compliance with Section 112
Each requirement in Section 112 has a standard or test by which it is determined.
Enablement
Section (a) of the statute expressly states that enablement is determined by “any person skilled in the art to which it pertains.” Section 112(a). Enablement is evaluated by considering the disclosure as a whole.
Written Description of the Invention
The general test for written description of the invention is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” In re Owens (Fed. Cir. 2013) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Possession of the claimed subject matter must be shown in the disclosure. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”).
A description that merely renders the invention obvious does not satisfy the written description requirement. See Lockwood v. American Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) (“The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”). The USPTO states “[t]he criteria for determining patentable distinction between designs under 35 U.S.C. 102 and 103 are not precisely the same as those used in determining written description compliance under 35 U.S.C. 112(a).” App. No. 29/585,486, ProSearch, p. 82.
The written description requirement does not require any particular form of disclosure or that the specification recite the claimed invention precisely. See Carnegie Mellon Univ. v, Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). In the design patent context, the written description requirement applies to the design as a whole, and it is not appropriate to conduct a specific micro-analysis of individual design features. See Skechers USA, Inc. v. Nike, Inc., IPR2016-00870; see also David’s Bridal, Inc., v. Jenny Yoo Collection, Inc., No. PGR2016-00041 (PTAB) Patent No. D744723, Paper No. 11, page 17, Entered February 22, 2017 (citing Ex parte Asano, 201 U.S.P.Q. 315 (BPAI 1978)) (“The test for new matter is not whether the desired correction was ever specifically illustrated in a particular figure as filed, but whether there is support anywhere in the drawings for the necessary or desirable figure corrections.”)
The written description may disclose the invention inherently. See Power Oasis, Inc, v, T-Mobile USA, Inc, 522 F.3d 1299, 1306-07 (Fed. Cir. 2008). Inherency exists when extrinsic evidence makes clear that the missing description is necessarily present in the invention described and would be so recognized by persons of ordinary skill in the art. Inherency may not be established by probabilities or possibilities and “the mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). See also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure …. Rather, it is a question whether the application necessarily discloses that particular device.”).
For design patents, the written description of the invention consists of the drawings (and brief drawing descriptions and feature statement, if any). In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998); In re Klein, 987 F.2d 1569, 1571 (Fed. Cir. 1993). Many of the principles surrounding the written description requirement have developed in the context of an applicant seeking a priority date from an earlier application. In Racing Strollers, Inc. v. TRI Industries, Inc., 878 F.2d 1418, 1419 (Fed. Cir. 1989), the Federal Circuit stated “[a]s a practical matter, meeting the remaining requirements of Sec. 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein by the prescribed formal claim ….” If a boundary line is added in a later filed application or amendment, the written description requirement will be satisfied only if the added boundary makes explicit a boundary that already existed, but was unclaimed, in the original disclosure. See In re Owens, 710 F.3d 1362 (Fed. Cir. 2013).
Particularly Point Out and Distinctly Claim the Claim
The two requirements of particularly pointing out and distinct claiming usually are grouped together and collectively called the “definiteness” requirement. In Maatita, the Federal Circuit considered the two requirements together and stated “[u]ltimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” (quoting and citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). 900 F.3d 1376. The court also stated “[t]he purpose of § 112’s definiteness requirement, then, is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed—and therefore what would infringe.” Id. Finally, the court stated “[g]iven that the purpose of indefiniteness is to give notice of what would infringe, we believe that in the design patent context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer,” and “[t]hus, 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.” Id. at 1377.
When determining definiteness, the claimed design should be viewed as a whole. [cite] However, this approach is not always strictly followed by examiners. Often the rejection never states that the analysis is of the design as a whole. And sometimes the rejection expressly states that the analysis is of an individual element without reference to the entire design. Further, sometimes examiners mention the requirement in MPEP 1503.02 that “[n]othing regarding the design sought to be patented must be left to conjecture. These issues are addressed in the next section.
Reconciling the “As a Whole” Requirement with 37 CFR § 1.152 Design drawings (Complete Disclosure) and MPEP 1503.02 (Nothing Regarding the Design sought to be Patented must be left to Conjecture).
The requirement to view the design “as a whole” often means minor inconsistencies and areas of indefiniteness can be overlooked if they don’t preclude an ordinary designer from an overall understanding of the design. Applicants often cite this principle when arguing to overcome a Section 112 Rejection or an Objection. Two seemingly contrary principles are contained in 37 CFR § 1.152, entitled “Design drawings” and MPEP 1503.02, entitled “drawing.”
37 CFR § 1.152 states in relevant part “[t]he design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design” and “[a]ppropriate and adequate surface shading should be used to show the character or contour of the surfaces represented.” (emphasis added). MPEP 1503.02 states in relevant part that “[n]othing regarding the design sought to be patented must be left to conjecture.” These two principles are often cited by examiners when making rejections or objections. Can the three principles be reconciled?
As an initial matter, it is important to place each principle in the context of its history and development, which is addressed in another article.
The key to reconciling the three principles is to understand that each is directed toward a different yet complementary goal and each is determined by applying the standard of a designer of ordinary skill in the art. The goals of Section 112 have been explained above. Briefly, they include (1) ensuring the claim is definite enough to determine validity over the prior art and infringement of accused products, (2) ensuring the claim is adequately described and enabled by the disclosure, (3) limiting the claim and future claims to what is described in the disclosure, and (4) ensuring the claim particularly points out what the inventor considers to be the invention and adhering to proper claiming conventions when doing so. These requirements are applied to the design as a whole because …
The goals of 37 CFR § 1.152 and MPEP 1503.02, while similar to the goals of Section 112, are directed more toward ensuring that drawings meet certain technical standards so that consistency in claiming and drawing techniques – and high drawing quality – may be maintained. These goals are important because clear and precise drawings can reduce the likelihood of future litigation over what the patent covers. Ambiguous drawings and descriptions, even if not deficient enough to warrant a rejection under Section 112, can lead to disputes over infringement and validity, which can be costly and time-consuming. Drawings and descriptions are analyzed by designers of ordinary skill. Opposing expert witnesses often disagree about whether substantial ambiguities exist in the drawings and descriptions, which can lead to a battle of the experts and additional time and expense. Even if litigation cannot be avoided, clear and precise drawings and descriptions can help avoid the need for a time-consuming claim construction hearing, or at least reduce its complexity.
When a rejection or objection is received regarding a design feature that might be considered de minimus, unless there is some disadvantage to correcting the basis for the objection, the applicant should consider doing so. Failure to correct a de minimus ambiguity could lead to a problem later. For example, if a continuation application claims only the small portion of a design containing an ambiguity, the effect of the formerly de minimus ambiguity on the overall appearance of the newly claimed design portion could increase to where it is no longer de minimus and warrants a rejection under Section 112.
Although Maatita currently is law of Federal Circuit, strong arguments exists that the Maatita analysis is seriously flawed. These flaws will be explained in another article.
Illustrating Violations of 35 U.S.C. Section 112
Diagrams above illustrate information and claiming that satisfy the four requirements in Section 112. The diagrams below illustrate violations of Section 112.
First, when the written description of the invention does not support the claim:
In the figure above, the scope of the claim exceeds the scope of the disclosure. An example of this is when the claim states “substantially” as shown and described. In such a case, the claim seeks to claim not only what is shown and described in the disclosure, but also what is substantially as shown and described in the disclosure, which would necessarily include matter outside the four corners of the disclosure. Note that the MPEP considers a lack of written description to be a lack of enablement as well.
Second, when the claim does not particularly point out the Invention:
In the figure above, the written description of the invention is inadequate in that it does not particularly point out what the invention is in the context of the full disclosure. Examples of this are when alternate drawing examples are mentioned but not illustrated, when drawings are inconsistent, and when drawings are inconsistent with the specification. See Eclectic Prods., Inc. v. Painters Prod., Inc., No. 6:13-CV-02181, 2015 U.S. Dist. LEXIS 26336 (D. Or. Mar. 2, 2015) (holding a design patent claim invalid for indefiniteness when the verbal description of the claimed design stated it was addressed to an applicator cap on a tube dispenser used for spackling paste but the drawings did not show any cap, just the tube dispenser).
Note the inconsistencies must be great enough to “preclude the overall understanding of the drawing as a whole.” Ex Parte Asano, 201 U.S.P.Q. 315, 317 (B.P.A.I. 1978); see also Antonious v. Spalding & Evenflo Cos., 217 F.3d 849 (Fed. Cir. 1999) (unpublished) (reversing summary judgment of indefiniteness when alleged inconsistencies between drawings could have been based on perspective and were not “sufficient to preclude a person from gaining an overall understanding of the total substance of the designs”); Deckers Outdoor Corp. v. Romeo & Juliette, Inc., Case No. 2:15-cv-02812, 2016 U.S. Dist. LEXIS 166153, 2016 WL 7017219, at *3-5 (C.D. Cal. Dec. 1, 2016) (holding that two patents covering a boot design met § 112’s definiteness requirement, despite the fact that some figures showed a small “v-shaped notch” on the inward-facing side of the boot and other figures arguably did not).
Third, failure to distinctly claim the invention:
In the figure above, the inner black circuit represents the outer limit of what is considered acceptable for distinct claiming. Since the claim exceeds the limit, the claim is indefinite as not being distinctly claimed. An example of this is when a claim attempts to claim indefinite elements.
Note that the limits of what is considered acceptable for distinct claiming sometimes fluctuate. In the diagram below, the distinct claiming requirement (dark boundary between the disclosure and the claim) has been relaxed and widened to the point where the claim pointed out in the diagram above is considered to be distinctly claimed. An example of this is when the term “substantially” was permitted in a claim. A second example is when applicants were permitted to expressly claim that certain design elements had indeterminate depth. A third example is the Maatita case, which single view of a three-dimensional design can be claimed with a two-dimensional drawing
