Introduction
Failure to disclose the depth of certain design features is one of the most frequent rejections made during design patent prosecution. Rejections typically arise because applicants inadvertently overlook the necessity of providing a perspective or cross-sectional view of certain design features shown only in a two-dimensional view. Other times rejections arise because applicants deliberately attempt to broaden the scope of a claim by not claiming depth.
The purpose of this article is to review common 35 U.S.C. § 112 rejections concerning failure to disclose depth, to analyze the imperfect but pragmatic legal framework from which they arise, and to consider how the rejections may effectively be overcome. Related objections also will be considered. This article will serve as a reference platform for ongoing posts that monitor weekly developments in design patent applications containing Section 112 rejections.
Practical Forces Underlying the Failure to Disclose Depth
Consider first the practical forces underlying the sometimes intentional and sometimes inadvertent failure to disclose depth. The intentional failure to disclose depth usually results from a desire to broaden the scope of a design patent claim. Unlike utility patents, design patents are limited to only one claim. Applicants interested in capturing a broader range of competing products as infringements therefore search for ways to broaden the scope of the single claim. This was the motivation behind the application in In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018) where the applicant chose not to claim the depth of certain features of a shoe sole by providing only a bottom plan view with no shading. Much to the surprise of the United States Patent and Trademark Office (USPTO) and many practitioners, the Federal Circuit Court of Appeals (Federal Circuit) approved the practice. The holding may provide new opportunities to broaden the scope of design patent claims and to argue that rejections for failure to disclose depth should be withdrawn. So far these efforts and arguments have met with mixed success, and there has been inconsistent interpretation of Maatita at the USPTO and the Patent Trial and Appeal Board (PTAB).
The inadvertent failure to disclose depth is common because the drawing defect is easy to overlook. Indeed, the very reason the claim in Maatita was allowed is similar to the reason applicants may overlook the requirement to disclose depth in additional three-dimensional views. In Maatita, the court held there was no need to disclose depth because an ordinary designer, viewing the claimed design from the perspective of an ordinary observer, would be able to view the design with enough understanding to determine whether a competing design infringed. A similar thought process typically occurs when applicants review drawing figures before submission to the USPTO. Some design elements shown only in two dimensions do not immediately jump out as inadequately disclosed because, like the ordinary observer in Maatita, the applicant’s mind subconsciously fills in the design details and considers the design disclosure sufficient. Unless an applicant has a trained eye and deliberately focuses on whether the depth (or height) of each design feature is fully disclosed from the drawing views shown, the need for additional views to disclose depth can be easily overlooked.
The Typical Section 112 Rejection and Response
Most Section 112 rejections in design patent applications follow the same pattern. The Examiner paraphrases Section 112 and then provides reasons the claim is indefinite and nonenabling. For example:
“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 clearly disclose the subject matter which the applicant regards as the claimed invention. The claim is indefinite and nonenabling for the following reasons:”
In the usual rejection, there is no distinction made between indefiniteness and enablement and no mention of the standard employed. Sometimes the rejection expressly states the design is being analyzed “as a whole” and sometimes it does not. Other rejections expressly state the focus is on an individual design element. See No. 29/812,678 (“The circle shown in the center in figure 6 is indefinite as it is not shown in any other view and the overall appearance of this element cannot be understood without resorting to conjecture.”) (emphasis added); see also 29/775,429 (“The claim is indefinite and nonenabling because the elongated element on the side of the cart in figure 3 cannot be understood because of the limited number of views where it is shown. The clear size and overall appearance of the element cannot be understood without resorting to conjecture.”) (emphasis added).
The Examiner often suggests overcoming the rejection by disclaiming the indefinite and nonenabled design feature using broken lines or by deleting the figures containing the features. Most applicants agree to do this, and the rejection is overcome.
Advantages and Disadvantages of the Typical Response
There are both advantages and disadvantages to disclaiming allegedly indefinite and nonenabled design features.
Advantages
Faster Prosecution – an obvious advantage to disclaiming allegedly indefinite and nonenabled design features is that the rejection is quickly and easily overcome and, assuming no other problems with the application, prosecution is advanced, and the design patent will issue.
Broader Claim – typically the less that is claimed in a design patent, the broader the scope of the claim. That is because when the claimed design contains a lot of design features, it is easier to avoid infringement by eliminating some of the features in a competing design.
Disadvantages
More Prior Art Considered – When design features are disclaimed, the amount of potential prior art increases that can be used to deny or invalidate a design patent. That is because in a prior art comparison, only the claimed features are compared against the same or similar features in the prior art. The features or figures disclaimed may be what distinguishes the design as a whole from the prior art. When the features are disclaimed, the design patent may be refused or rendered invalid. Remember that in litigation, often more prior art will be found by an opponent and the disclaimed features will not be available to distinguish the prior art.
Effect on Infringement Analysis – Design patent infringement analysis is complex and fact specific. The patented and accused designs are compared as a whole in light of the relevant prior art by a hypothetical and objective ordinary observer. Although the designs are compared as a whole, individual design elements make up the whole, and the elimination of individual design elements through disclaimer can impact the way the design appears as a whole. There are circumstances when a claimed design without disclaimed elements has a higher probability of being held infringed by an accused design than a claimed design with disclaimed elements. This is particularly true when designs are relatively simple, and each design element has a greater visual impact on the appearance of the design as a whole. For example:
In Claimed Design 1 above, shade lines indicate the triangle, circle, and rounded rectangle areas all are coplanar with the surface area. Therefore, all the design features are definite and enabled and all can be considered in the comparison with Accused Design 1. Even though the oval in the Accused Design is different than the circle in the Claimed Design and the rounded rectangles are different lengths, a strong argument exists that the overall designs are substantially the same due to similar placements and shapes of the three design elements.
In Claimed Design 2 below, the triangle has no shade lines so it is unknown whether the triangle is coplanar with the surface, depressed, raised, or an opening. Assuming the design was claimed in three-dimensional form, the triangle area is indefinite and nonenabled and must be disclaimed by placing it in broken lines as in Claimed Design 3, below right.
The effect of the disclaimed triangle is that now only the following features are compared with each other as a whole. With only two design features remaining, the differences in the shapes are more pronounced when the designs are compared as a whole, and a stronger argument for noninfringement exists. Note that in an infringement analysis, with the triangle disclaimed in the claimed design, the triangle in the accused design usually will be ignored.
Limit Options for Continuing Applications and Reissues –
Disclaiming design features also can limit your options when considering a continuing application or a reissue patent. Frequently competitors will attempt to design around a claimed design by retaining certain design features and changing others.
Using the same example above, assume the competitor kept the triangle but changed the other design features to a series of small squares, as in below right:
If the triangle is claimed as in above left, then a continuing application, or (if filed within two years) a broadening reissue patent application, can be filed to claim the design below left. Assuming the new design meets all other patentability criteria, then the new design will capture the attempted design around (below right) as an infringement because only the claimed feature is compared and the small squares are ignored in the analysis.
However, if the triangle must be disclaimed due to indeterminate depth, then the continuing application or broadening reissue will not be successful and the competitor’s design around effort will not infringe.
Challenging the Rejection
Occasionally Applicants challenge a Section 112 rejection. The following are arguments that have proven to be successful.
Successful Arguments
Successful arguments can be divided into at least five general areas. First, showing and explaining to the examiner that the current disclosure is adequate. Second, showing and explaining to the examiner that the current disclosure is adequate based on In re Maatita. Third, adding drawing figures without adding prohibited new matter. Fourth, converting the disclosure from three dimensions to two dimensions by cancelling figures and changing the title. Fifth, arguing the design feature in question is not material to the overall appearance of the design.
Showing and Explaining to the Examiner that the Current Disclosure is Adequate
Current Drawings are Adequate
The Applicant first should consider arguing that the full claim is definite and enabled by the current drawing figures. Consider scrutinizing all the figures. Perhaps the examiner overlooked another drawing feature that can provide the necessary information. For example, in No. 29/832,946 for a Beverage Cooler Cup, the examiner issued a rejection asserting, inter alia, that a designer of ordinary skill could not understand the depth and three-dimensional appearance of the design features A1 and A2 in Fig. 5 below:
The applicant responded that the depth and three-dimensional appearance of lines A1 and A2 are clearly shown in Figure 7, below. The examiner agreed and withdrew the rejection.
Provide a more Complete Written Explanation
Another approach is to provide a more complete written explanation explaining why the features are enabled. For example, in No. 29/772,887 (now USD 1,007,136), three original figures were submitted. Figure 1 is as follows:
Each figure depicted a circular design element on the tongue of the shoe, as follows:
The examiner issued a Sec. 112 rejection for two reasons. First, the examiner argued that the universal application of stippling across surfaces in FIGs 1, 2 and 3 does not clearly disclose the dimensional nature of the circular portion as flat, convex or concave.
Second, the Examiner argued that in FIGs 1, 2, and 3 the variable line thickness of the circular element does not clearly aid in showing if the area it surrounds is convex, concave or flat across.
Rather than submit corrected drawings, the applicant argued that (1) someone with ordinary skill in footwear would recognize the panel’s shape as conforming to the curvature of a foot, based on general footwear knowledge and a comparison of figures in the patent, and (2) the stippling and curvature on the panel are consistent with adjacent areas, indicating no significant deviation in shape.
In response to the second reason for the rejection, the applicant argued that the combination of variable line width and adjacent stippling clearly shows the panel’s position as slightly below the surrounding panel, and that this depiction technique, which has been used extensively and accepted by the USPTO in the past, prevents lines from merging in tightly spaced areas. The Applicant further argued that (1) the thickness of the surrounding panel’s depiction—thicker where visible and thinner otherwise—provides clear cues for understanding the design, and (2) the method used is recognizable to those skilled in footwear design and supported by comparative figures and commercial product images.
Finally, the applicant argued that the law does not require the depiction of an “exact appearance” (citing Ex Parte Asano), and that the possibility of multiple interpretations of varying panel thickness does not justify a Section 112 rejection (citing In re Maatita).
The examiner withdrew the Section 112 rejection based on the applicant’s remarks. The examiner found that (1) in the original figures, applicant showed and described one appearance of a flat circular panel located slightly below or recessed from a surrounding panel, and (2) the recessed flat circle and surrounding panel together form the claim of a shoe tongue portion that is depicted in the drawings as “conform(ing) to the curvature of the foot of the wearer.” Note that the examiner did not withdraw the rejection based on In re Maatita.
Rely on Knowledge of Designer of Ordinary Skill
Another way of providing additional explanation is to rely upon the knowledge of a designer of ordinary skill. For example, in No. 29/795,571 for a Combination Plier, the Applicant responded to a Sec. 112 depth rejection by slightly modifying the shading on a drawing and explaining that a person of ordinary skill would understand the depth. Figures 2 and 3 of the original drawings submitted were as follows:
The Examiner issued a 112 rejection, stating “[t]he claim is indefinite and nonenabling because the precise nature of the hexagonal feature on the back side of the pliers cannot be determined from the drawing disclosure” and “[t]he shading lines indicate a difference in surface between the main body of the pliers and the area inside of the hexagonal shape, but it cannot be determined what that difference is.”
The Applicant responded by changing the shade lines on Fig. 3 to “further emphasize that the surface in the hexagonal feature is different from the surface of the main body,” as follows:
The Applicant also explained that “the hexagonal feature has a depth that goes down to the cutting surface (i.e., the cutting surface is the end wall of the hexagonal feature),” arguing: “As FIG. 3 is a plan view, the sides leading down to the cutting surface would not be viewable; however, a person of ordinary skill would understand from FIG. 3 that the hexagonal surface has depth and that the cutting surface (shown in FIG. 2) acts as the end wall of the hexagonal feature.” The Examiner withdrew the rejection and allowed the design patent to issue.
A second example of relying upon the knowledge of a designer of ordinary skill to overcome a Sec. 112 rejection is No. 29/495,761 for a Motor of a Vehicle. The Examiner alleged that certain design elements were indefinite and non-enabled because the drawings did not show the exact orientation and sloping of the planes of the surfaces.
The applicant appealed the rejection, and the Board reversed, stating “[t]he Examiner’s indefiniteness rejection does not sufficiently account for the background knowledge and experience brought to bear by the ordinary observer.” The Board stated further “[a]n ordinary observer familiar with prior art motor designs would have appreciated that the shape and orientation of the various surfaces identified by the Examiner’s arrows in Figures 1 and 2 are limited by the constraints of a motor design, especially in terms of how the various surfaces must combine in order to form a motor, as shown by the totality of Figures 1-5.”
Showing and explaining to the examiner that the current disclosure is adequate based on In re Maatita
In In re Maatita, the Federal Circuit held that a design patent claim was not indefinite under Section 112 even though it did not disclose the depth of certain design elements of a shoe sole. Fig. 1 as originally filed is as follows:
The Examiner rejected the claim based on Section 112 because the depth of certain features could not be determined. The Examiner provided four examples of how the depth of the claimed design elements could be construed:
The Board affirmed, stating “[b]ecause the curvilinear shapes of the different surfaces of the claimed shoe bottom design cannot be determined with any specificity, including whether each is convex or concave, and because the single view does not adequately reveal the relative depths and three dimensionality between the surfaces provided, the specification does not reveal enough detail to enable the claimed shoe bottom, under 35 U.S.C. § 112, first paragraph [and] [t]he same lack of clarity and detail also makes the scope of the claim indefinite under 35 U.S.C. § 112, second paragraph.” In re Maatita, 2015-005829, 5, 6 (PTAB Mar. 29, 2017).
The Federal Circuit reversed, reasoning that a shoe sole was similar to a rug or mat, which could be adequately disclosed with a single plan drawing. The Court explained that although the shoe sole was part of a three-dimensional article (a shoe), the applicant had chosen to claim only the bottom of the shoe, which made it more like the mat or rug. Further, although the shoe sole had features that could be interpreted as raised, flat, or depressed, the inventor had chosen not to claim any particular height or depth to those features. The Court concluded that such claiming technique was permissible since the definiteness of a claim is to be considered from the perspective of one of ordinary skill in the art viewing the design as would an ordinary observer, and an ordinary observer could tell whether an accused design infringed from that one drawing alone. In short, the Court held that if the drawing is sufficient to determine infringement, then it complies with 35 USC 112.
Applicants have used the holding and rationale of In re Maatita to argue against Section 112 rejections – with mixed and sometimes inconsistent results. As an initial matter, the Patent Office produced training materials that addressed two relatively simple examples of when Maatita probably would and probably would not apply. The first example is a bath mat with a sole figure of a plan view:
The training slide states “[t]hings to consider: – The design does not claim three dimensional aspects of the bath mat; – The application does not include multiple figures showing the claimed design from various points of view; and – The figure does not include surface shading.” The slide concludes “[t]he single plan view sufficiently discloses the claimed design for a bath mat under the enablement and definiteness requirements 35 U.S.C. 112.”
The second example is a tea kettle with a sole figure of an elevational view:
The training slide states “[t]he contents of the application indicate that three-dimensional features are being claimed. For example: – The article recited in the claim, i.e., “tea kettle”, is inherently three-dimensional; – The application includes a single figure disclosing a design claiming three dimensional aspects from an elevational view perspective (for example, the curved surface of the claimed body of the kettle); and – The figure includes surface shading showing the contour of three dimensional aspects of the kettle.” The slide concludes “[i]t would be reasonable for the examiner to make a rejection for lack of enablement and indefiniteness under 35 U.S.C. 112, on the basis that the claimed design for a tea kettle is not capable of being understood from the single elevational view perspective.”
In sum, when the application does not claim three dimensional aspects of the design, does not include multiple drawings showing different points of view, and does not include shading, the claim is likely enabled and definite. In contrast, when the article of manufacture recited is inherently three-dimensional, the application claims three dimensional aspects of the design, and the figures show surface shading, the claim is likely non-enabled and indefinite with one drawing view.
These two simple examples leave several questions unanswered about the potential application of In re Maatita, such as:
- Can some design features be claimed in two-dimensions and other design features be claimed in three dimensions, i.e., can some features be claimed in just two-dimensions in a three-dimensional design?
- Can the reasoning in Maatita ever apply to applications with multiple drawing figures showing different points of view?
- Can the reasoning in Maatita ever apply to drawings with surface shading?
The cases and applications discussed below indicate that the answers to questions two and three are yes. Regarding the first question, the answer is important because many Section 112 rejections can be easily overcome (and never would have been made) if some features in a three-dimensional design can be claimed in two-dimensions. Unfortunately, the answer is unclear and appears to be evolving. In No. 29/608,417 for a Transfer Case Gear Housing, the applicant filed a design patent application with sixteen drawing figures. Figures 3, 4, and 14 are shown below.
The examiner rejected the claim under Section 112 because the depth of certain design features (labeled A below) could not be determined, as follows:
In response, the applicant cited Maatita and argued “[t]he fact that the Transfer Gear Housing can have three-dimensional aspects does not change the fact that its ornamental design is disclosed and capable of being judged from a two-dimensional, plan- or planar-view perspective.” The applicant argued further “[m]oreover, taking the drawings as a whole, one skilled in the art would be able to determine the overall appearance of the design with reasonable certainty” and “[a] designer of ordinary skill in the art judging the Transfer Gear Housing, as an ordinary observer, could make comparisons for infringement purposes based on all of the provided figures.”
In reply, the examiner issued a final rejection, alleging (1) the transfer case gear housing is considered to be three-dimensional and cannot be adequately disclosed with a single plan or planar view drawing, (2) infringement is not an important issue in the examination process, and (3) “[a]lthough the unclear surfaces and elements on the housing are small in relation to the entire article, they are still considered to be a part of the complete disclosure, and the exact depths are left to conjecture, which leave the entire article unclear and incomplete.”
Applicant appealed and the Board affirmed, observing that applicant’s argument was basically that Maatita permits an applicant to claim a design partly in three-dimensions and partly in two-dimensions. The Board rejected applicant’s argument, stating “Maatita indicates that, where an appearance of a nominally three-dimensional article is presented in a single figure that is a two dimensional plan view, and the appearance of that article is capable of being understood from that view, the uncertainty of relative heights and depths of features appearing thereon does not, in and of itself, render a claim indefinite or non-enabled.” The Board concluded that applicant’s transfer case gear housing was not comparable to the shoe sole in Maatita, but was rather like an entire three dimensional shoe or teapot where the overall appearance of the article could not be adequately disclosed with portions being illustrated in only two dimensions. On remand to the patent office, the applicant converted the indefinite and non-enabled portions to broken lines and the design patent issued.
In No. 29/490,118 for a Fuel Injector Cleaner Block, the applicant filed a design patent application with eight drawing figures. Figures 1 and 7 are shown below.
The examiner rejected the claim under Section 112 because the depth of certain design features could not be determined, for example as follows:
The examiner provided examples of different possible configurations of feature D:
The applicant appealed and the Board reversed, stating “[t]he Examiner erred in determining that the breadth of the presently claimed design renders it indefinite. (citing In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (‘Breadth is not indefiniteness.’); In re Maatita, 900 F.3d 1369, 1377-79 (Fed. Cir. Aug. 20, 2018).” The Board agreed with the Examiner that the “central detail of feature D is not precisely defined, either in its height, or its shape,” but “based on the views shown in Figures 1 and 7, the scope of the claimed block design, while broad in those particular respects, is clear with reasonable certainty to an ordinary observer. See Maatita, 900 F.3d at 1377.”
In No. 29/430,805, for an Ice Cream Product, the applicant filed a design patent application with six drawing figures. Figures 1, 2, 4, and 6 are shown below.
The Examiner issued a rejection under Section 112 because the precise shape of the ice cream below the top lip of the unclaimed container could not be determined. The applicant appealed and the Board reversed, stating “the question is not whether the parameters of these dimensional details could have been more precisely disclosed in additional drawing views,” but “whether these precise parameters are necessary to sufficiently inform an ordinary observer of the scope of the claim.” The Board stated “the Appellant’s use of shading effectively represents the contour of the undulations in the rosette pattern so as to provide an ordinary observer with a sufficient understanding of the claimed design” and the ordinary observer “would not be visually concerned with the precise parameters of geometries located below the top lip of an ice cream container, and thus would not need to know these precise parameters to understand the scope of the claimed design.”
In No. 29/583,860 for Ornamental Design for a Light System, the applicant filed a design patent application with three drawing figures.
The Examiner rejected the claim because “[t]he depth of the white surfaces and recessed black areas and the spatial relationships of the black outlines and linear features with the gray surfaces is unclear” and the drawings “do not show clearly the amount the surfaces are recessed among the gray, black, and white surfaces.”
The applicant appealed and explained they “do[] not claim the exact depths of the certain features” and therefore “disclosure of the exact depths of these features is not necessary to enable one of skill in the art to make a light system embodying the claimed design, nor is it necessary in order for one of skill in the art to understand the scope of the claimed design.” The Board did not sustain the rejection, stating “[a]lthough the Examiner maintains that the drawing disclosure is not ‘sufficient in disclosing the three-dimensional aspects’ [citation omitted], the Examiner does not explain how the Appellant’s decision ‘not to disclose all possible depth choices’ would preclude a skilled artisan ‘from understanding the claimed design’” (citing Maatita, 900 F.3d at 1378).
Adding Drawings without Adding New Matter
Another way a Section 112 rejection may be overcome is to add drawings without adding new matter. This may be done by adding drawings from the appendix and from a previous parent application. Further, shading may be added when it is supported from other drawings and a sectional view may be added when it supported by other drawings.
Adding drawings from an Appendix
In No. 29/825,051 for Support for a Purse, the applicant filed a design patent application with two drawing figures 1 and 2 and an appendix with additional drawing figures including A1.
The Examiner issued a Section 112 rejection, stating “there is no way to tell the thickness of the support for a purse from studying the two views.” The applicant responded that the design was being claimed in two dimensions only (with thickness not being claimed) and was not indefinite and nonenabled under Maatita. The Examiner then issued a final rejection, explaining that “[t]he two-dimensional views provided do not enable a person skilled in the art to make and use the same because they do not adequately disclose the three-dimensional design of the support for a purse, which is crucial to understanding the scope of the claim since the support for a purse is comprised of two pieces that somehow change in configuration.”
To overcome the final rejection, the applicant added figure drawings that were in the appendix, including the following:
Based on the newly added drawing figures from the appendix, the 112 rejection was withdrawn, and the claim was allowed.
Adding drawings from previous parent applications
In No. 29/837,842 for a Lifting Apparatus, the applicant filed a design patent application with the following sole drawing figure:
The Examiner issued a 112 rejection, stating it was unclear from a single view how the angled mechanism attaches. The applicant responded that the 112 rejection was improper under Maatita. The Examiner then issued a final rejection, stating that “the Lifting Apparatus is an inherently large complex three-dimensional article” and “would be viewed from all angles and could have any number of depths/thickness.” Further, “[i]t is clear from the single view that there are multiple planes and varying heights within the claim” and “[a]lthough many of the features are unclaimed it is still clear that the claimed matter is on different three dimensional planes.” The Examiner concluded “[t]he ordinary observer would not be able to understand the claimed design without any additional information or views, the depth and configuration of the claimed features are not clear.”
The applicant then filed a replacement sheet (Fig 1) and a new sheet (Fig. 2) that were included in a previous application incorporated by reference in the original filing:
Based on the new drawing figures, the Examiner withdrew the 112 rejection and allowed the claim. Note that any previous application relied upon must have been made of record in the original filing.
Adding shading supported from other drawings
Numerous applications indicate it is not permissible to add shading because it constitutes new matter. For example, see App. Nos. 29/900,226 and 29/801,957. However, when the additional shading is supported by other drawings, it is permissible. For example, see App. Nos. 29/766,266, 29/766,266, and 29/785,651.
Adding a cross-sectional view supported by other draw
One of the most effective ways to overcome a Section 112 rejection for indeterminate depth is to add a cross-sectional view. Unfortunately, if a cross-sectional view is not included in the original filing, usually it is not possible to add one as it will constitute new matter unless other drawings will support it. Although relatively rare, examples of applications where a cross-sectional view was successfully added include No. 35/515,275 for a metering pump, with Fig. 1 below left:
The Examiner rejected the claim under Section 112, stating in connection with the diagram (above right) that:
“The examiner is unable to determine the exact three dimension[al] make up of the shaded region below. Is this area a solid transparent volume, a solid volume that is a separate element or simply a void between the details called out by arrows and the interior helical center shaft? The examiner understands the helical center to be hollow through from the interior of the upper vessel and the end of the tip. It may be possible to add a cross section that would clarify the interior make up. It is with extreme caution that this suggestion is made, as the introduction of new matter is always possible when new views are added to the disclosure. The examiner[’s] present stance that the well executed transparent drawings should provide proper support to allow the addition of a section drawing.”
The applicant added the following cross-sectional drawings that clarified the interior structure of the claimed design, and the 112 rejection was withdrawn.
A second example is No. 29/745,372 for a Bottle, where the initial drawings submitted included the following:
The Examiner rejected the claim based on Sec. 112 stating “[t]he exterior and interior bottom surface is demarcated with shading in Figures 2, 5 and 6 in the disclosure,” “[h]owever, no drawings included in the disclosure provide a full understanding of the shape and depth of the exterior and interior bottom surface of the claimed design.” The Examiner provided annotated drawings for an example of the unclear parts, highlighted in grey below.
The Examiner recommended as one alternative to overcome the rejection an amendment of the drawings to include the middle figure from page 6 of the appendix provided by the applicant (the “side-sectional” view), below left, as follows:
The applicant added Figs. 3 and 9, above right, and the Section 112 rejection was withdrawn.
Converting a Three-Dimensional Design to Two-Dimensional Design
A fourth approach to overcome a Section 112 rejection is to convert a three-dimensional design into a two-dimensional design. This can be done in at least two ways. First, shading can be removed. For example, in No. 29/895,139, the Applicant submitted two embodiments of a Shoe Sole, one of which appeared as follows:
The Examiner issued a Section 112 rejection, stating:
The three-dimensionality of the design cannot be fully understood in the single view of each embodiment presented. The single view includes indications of three-dimensionality in the form of shading that cannot be judged from this single viewpoint. Specifically, while there is shading, it is unclear if the generally triangular elements follow curvatures of the side of the heel that could vary significantly based upon the shoe sole’s design, as well as upon which side of the foot these elements might be found (for example, on the lateral side of a foot, this area is often times convex, whereas on the medial side, it would likely be concave). Similarly, it is unclear what contour might be from top to bottom of the midsole. See below:
The Examiner concluded “[g]iven the suggestions of three-dimensionality, the shoe sole cannot be understood or judged from the single viewpoint in each embodiment.”
The Applicant submitted a replacement Figure as follows:
The Examiner withdrew the rejection and explained as follows:
Applicant has changed the scope of the design by removing all indications of three dimensionality through the removal of surface shading. This is not considered new matter as applicant was clearly in possession on the filing date of the two-dimensional design. As such, the previous rejection under 35 U.S.C. 112 has been withdrawn as the claim is two-dimensional in nature and therefore can be understood as such (see following comment). Applicant’s amended specification also overcomes the previous objection, which has also been withdrawn.
Applicant’s single-view disclosure (a single view of each embodiment) depicts a design having no three-dimensional appearance. There is no surface shading and there are no contour lines showing form or depth. From the single view, the design depicted is capable of being understood as two-dimensional in nature, In re Maatita, 900 F.3d 1369 (Fed. Circ. 2018). It is the examiner’s opinion that in light of this decision, the claim is patentable as a two-dimensional design with a like scope of protection, capable of being understood only from the sole viewpoint presented. See also 29/767,192; 29/772,563.
A second way to convert a three-dimensional design into a two-dimensional design is to cancel all drawing figures but one. For example, in No. 29/773,796, Applicant originally filed multiple drawing figures for an Imaging Device for a Housing. Then in a preliminary amendment, all figures were cancelled but the one shown below:
The Examiner issued a Section 112 rejection, stating as follows:With the applicant’s sole selection of FIG 50 from the drawings submitted on 3/11/021 and renamed as FIG 1 in the preliminary amendment on 4/30/2021 the examiner is unable to understand the claimed design due to the lack of additional views. Without additional views, the depth and overall design cannot be understood.
The Applicant responded that the sole Figure brought the application within the holding of Maatita. The Examiner agreed, withdrew the rejection, and allowed the claim. See also 29/773,796; 29/712,248 (still has shading); 29/760,391 (removing not new matter); 29/818,051 (Preliminary Amendment).
A third way to convert a three-dimensional design into a two-dimensional design is to change the title of the claimed design. For example, in App. 29/681,102, the original title of the claimed design was Wheel and one of the original drawings was as follows:
The Examiner rejected the claim under Section 112, stating “there is no indication of the depth or contour of the wheel” and “[t]he concentric circles are not fully disclosed to indicate their exact appearance, depth, or contour,” which “hinders a clear understanding of the concentric circles on the wheel.” In response, applicant argued that the claim was definite and enabled under Maatita, but that “in the interest of expediency and to be more in line with the ruling in Maatita, Applicant has amended the title, specification and claim to be directed to a “WHEEL SIDE” as is clearly depicted in the two-dimensional planar view.” The Examiner withdrew the 112 rejection and allowed the claim.
Arguing that the Design Feature at Issue is not Material to the Overall Appearance of the Design
A fifth way of overcoming a Section 112 rejection is to argue that the design feature at issue is not material to the overall appearance of the design. For example, in No. 29/802,265 for a Bidet, the Examiner stated “[w]hile the annotated portions shown in solid lines in Fig. 4 and 5 have no other views to explain their three-dimensional configuration, the lack of disclosure of these features does not preclude an overall understanding of the design and so does not form a reasonable basis for rejection of the claim.
In No. 29/695,110 for a Hand Held Aesthetic Treatment Apparatus, the Examiner stated “[w]hile the circle feature shown in a solid line in Fig. 6 has no corroborating view to explain its exact appearance and three-dimensional configuration, the examiner considers its inclusion in the claim to have no effect on the aesthetic appearance of the claim; that is, the feature does not preclude an overall understanding of the drawings and so does not form a reasonable basis for rejection of the claim.” (citing Ex parte Asano, 201 USPQ 315 (Bd. Pat. App. & Inter. 1978)).
2 Responses
Mr. Oake, this is very helpful. You’ve developed a concise guide for overcoming 112 rejections, but more importantly, a guide for preparing the proper drawings before filing. Thank you.
Thanks Kevin