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Several prosecution histories in the corpus show applicants and, occasionally, examiners engaging the "reasonably pertinent to the problem to be solved" prong of the analogous art test in the context of a Section 103 obviousness rejection. Before walking through them, note the controlling framework and an important caveat.

Controlling law. The Federal Circuit's en banc decision in LKQ v. GM (2024) overruled the Rosen-Durling test and set the analogous art requirement within the Graham framework for designs. On the analogous art scope, the court carried over the utility two-part test: "(1) whether the art is from the same field of endeavor as the claimed invention; and (2) if the reference is not within the field of the inventor's en- deavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is in- volved" CAFC-20240521-Lkq-Corporation-v-Gm-Global-Technology-Operations-LLC-21-2348. Importantly for your question, the Federal Circuit cautioned that in the design context "the problem to be solved may have less relevance in the design patent context than in the utility patent context" CAFC-20240521-Lkq-Corporation-v-Gm-Global-Technology-Operations-LLC-21-2348. So problem-to-be-solved arguments, while available, carry diminished weight for designs under current controlling law.

Examples where the problem-to-be-solved prong was argued:

1. Application 29/708,206 (connector hub for a surgical instrument). This is the clearest example, and notably the examiner ultimately agreed with the applicant. The examiner conceded that a skilled artisan "would not look to the cutting device as disclosed in Abe," and adopted the applicant's framing that the cited cutting device "is not from the same field of endeavor or reasonably pertinent to the problem of designing a connector hub for a surgical connector" 29708206. The applicant had relied on In re SurgiSil to argue the cited art must be "from the same field of endeavor or be reasonably pertinent to the particular problem the inventor is trying to solve" 29708206, and applied that to both the Abe cutting device and the Wolff "fuel breakaway device" 29708206.

2. Application 29/853,394 (wearable health tracker/monitor). The applicant expressly invoked both prongs, arguing the Eversense CGM was "neither from the same field of endeavor as the claimed design, nor is it reasonably pertinent to the problem faced by the inventor" 29853394, adding that "[a] wireless transmitter is not... reasonably pertinent to providing a wearable health tracker" 29853394. The examiner withdrew the Section 103 rejection.

3. Application 29/921,272 (yoga/exercise mats). The applicant laid out the two-part test and pressed the problem prong, explaining that "[a]rt is 'reasonably pertinent' when it would 'logically commend itself' to an inventor's attention in considering his problem" 29921272, identifying the field of endeavor as "mats, and specifically yoga or exercise mats," and asserting "the art is not 'reasonably pertinent' to the problem addressed by the inventor" 29921272.

4. Application 29/771,650 (vapor pads; appeal brief). The appellant separated the two tests and argued the problem prong independently, contending that to be reasonably pertinent a reference must "logically [] have commended itself to an inventor's attention in considering his problem" 29771650, and concluding that "menstrual pads are not reasonably pertinent to vapor pads" 29771650.

5. Application 29/659,854 (this one shows the examiner asserting the problem prong). The examiner rejected the applicant's non-analogous-art challenge to secondary references, asserting the reference "is reasonably pertinent to the particular problem with which the inventor was concerned" 29659854. This document also flags a pre-LKQ-flavored point: it frames analogous art in the anticipation/102 context and quotes the older proposition that "the problem of combining references is therefore one of combining appearances rather than uses" 29659854 — a formulation that predates LKQ's Graham-based approach and should be read with that in mind.

6. Application 29/866,534. The applicant argued the references "do not at all suggest that the field of endeavor is mailing... or that they are otherwise reasonably pertinent to a mailing tube" 29866534; the examiner allowed the case.

Relevant Federal Circuit authority on the problem prong in obviousness. In Tinnus Enterprises v. Telebrands, the Federal Circuit addressed a problem-to-be-solved analogous art argument directly. The court explained a reference can be used in an obviousness combination if it "is reasonably pertinent to the particular problem with which the inventor is involved," even outside the field of endeavor CAFC-20170124-Tinnus-Enterprises-LLC-v-Telebrands-Corporation-2016-1410, and found a reference too far removed from "the problems associ- ated with an endoscopic balloon insertion device" to qualify CAFC-20170124-Tinnus-Enterprises-LLC-v-Telebrands-Corporation-2016-1410. Note this is a utility patent case.

Guidance perspective. The USPTO's post-LKQ memo (examiner guidance, not law) instructs that where a reference is outside the field of endeavor, "the design examiner should consider the degree to which an ordinarily skilled designer would be motivated to consider other fields" REF-20240522-USPTO-Memo-LKQ-Obviousness-Guidance, and that non-analogous art "may not be considered by the examiner in assessing obviousness" REF-20240522-USPTO-Memo-LKQ-Obviousness-Guidance.

Two cautions. First, several of the prosecution examples cite In re Bigio, In re SurgiSil, and other pre-LKQ authority, and some recite the older "basically the same"/appearances-versus-uses phrasing; that pre-2024 framing should be treated as historical after LKQ overruled Rosen-Durling. Second, none of these prosecution documents or district/ITC/PTAB materials is controlling; only LKQ and the cited statutes are binding, and LKQ itself signals that the problem-to-be-solved prong carries less weight for designs.

### Source Documents:
- 29708206
- 29853394
- CAFC-20170124-Tinnus-Enterprises-LLC-v-Telebrands-Corporation-2016-1410
- 29866534
- 29921272
- REF-20240522-USPTO-Memo-LKQ-Obviousness-Guidance
- CAFC-20240521-Lkq-Corporation-v-Gm-Global-Technology-Operations-LLC-21-2348
- 29659854
- 29771650

Short answer: It is difficult, and the outcome depends on the specific disclosure. Under In re Owens, an applicant may introduce an unclaimed boundary line only where the line "make[s] explicit a boundary that already exists, but was unclaimed, in the original disclosure," and the boundary must not be "arbitrary or located where no implied boundary was evident in the original disclosure" 29443679, 29707023, 29677468. A note on current law: In re Owens governs written-description/priority questions under 35 U.S.C. § 112(a) and § 120, a distinct issue from design-patent obviousness. The en banc LKQ v. GM (2024) decision overruled the Rosen/Durling obviousness framework but did not disturb the Owens written-description analysis discussed here, so Owens remains controlling on boundary-line questions.

On whether shade lines can supply the necessary implied boundary, the prosecution histories show this argument being made and frequently rejected:

Examiners have repeatedly taken the position that a shade line, by its nature, is not a boundary. In one file, the Examiner reasoned that a shade line is used to show a "slight variation or difference of color, character, etc." and is "thereby not considered an implicit nor express boundary between sections" of a three-dimensional design; a "change in slope, as disclosed by the shade line in question, does not provide adequate support that the inventor was in possession of the rear portion" as a separable article of manufacture 29637724. Similarly, where an applicant converted an original shade line into a new broken boundary line, the Examiner found new matter because the line "was neither referenced nor described as a boundary line nor implied by way of disclosure as a broken-lined structure," and a "change in slope, as disclosed by the shade line in question, does not provide adequate support" that the inventor possessed the newly defined portion 29697793.

That said, the histories also show applicants arguing—sometimes with more traction—that a distinct change in shade lines can mark a non-arbitrary location. In one application, the applicant argued that the amended line "is not located at an arbitrary location, but rather, at a distinct location delineated by at least a change in shade lines in the as-filed" figures, because the shade lines above the line depicted "an entirely different curvature" than those below it 29822341. The key move there was tying the boundary to a demonstrable, visible transition in the original drawings (the curvature change reflected by the differing shade lines), rather than to shade lines generally.

The distinction that emerges is this: merely pointing to the "tips" or ends of shade lines, or to a shade line's mere presence, is generally insufficient, because a shade line indicates surface contour/curvature—not a boundary between separately claimable portions 29637724, 29697793. Owens itself requires that the original disclosure indicate the portion "might be claimed separately," and boundary lines "must not be arbitrary or located where no implied boundary was evident in the original disclosure" 29443679, 29677468, 29707023. Examiners have also emphasized that the sanctioned safe harbor is a "straight broken line connecting the ends of existing full lines" (or shading where it is "completely clear where the shading begins and ends"), and have resisted extending this to "implied boundary" lines terminating at solid lines 29725670, 29707023.

Practical takeaway: An applicant is more likely to succeed if the shade lines demonstrate a genuine, visible discontinuity in the original disclosure—such as a marked change in curvature or surface character at that location—so the boundary "makes explicit a boundary that already exists" 29822341, 29443679. Relying solely on the tips/endpoints of shade lines, without showing that those shade lines evidence a real transition the ordinary designer would recognize as a separable boundary, invites a § 112(a)/new-matter rejection 29637724, 29697793. Also note the caution that shade lines within areas being converted to unclaimed (broken-line) regions are themselves problematic, since shade lines are not permitted in unclaimed areas 29697793, and removing original shade lines can itself make the claim scope unclear 29711198.

Because outcomes are fact-specific, the strength of any such argument will turn on how clearly your particular as-filed drawings show that the shade lines mark a real, non-arbitrary transition rather than mere contour.

### Source Documents:
- 29637724
- 29725670
- 29822341
- 29443679
- 29677468
- 29707023
- 29711198
- 29697793

Here is what constitutes a proper motivation to modify or combine visual references without hindsight under current controlling law.

Current controlling framework. The Federal Circuit's en banc decision in LKQ Corp. v. GM (2024) is now the governing standard for design patent obviousness. It overruled the prior Rosen/Durling framework, under which a primary reference had to be "basically the same" as the claimed design before secondary references could be considered. Several of the excerpts here recite the older two-part formulation - "once this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design" 29639440, 29608792, 29841229, 29841323 - and one excerpt expressly reflects the pre-2024 posture that a panel "cannot overrule Rosen or Durling without a clear directive from the Supreme Court" 29639440. Those recitations should be treated as historical to the extent they depend on the rigid Rosen/Durling primary-reference test, which LKQ discarded in favor of a more flexible Graham-based analysis.

The core standard for motivation under LKQ. The motivation to combine or modify references need not come from the references themselves; the LKQ court adopted a KSR-style flexibility on this point 29735750, 2023-002969U. But flexibility is not a license for conclusory assertion. The controlling requirement, quoted repeatedly across these files, is that "there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design" 29795019, 29866979, 2023-002969U, 29841229, 29798750. The ultimate inquiry is whether an ordinary designer in the field would have been motivated to modify the prior art design "to create the same overall visual appearance as the claimed design" 29829342.

Why the "problem to be solved" matters less for designs. Your premise is directly supported by LKQ as quoted in these records. The court recognized that "[j]ust as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context" 29918349. This is because a design is ornamental rather than functional, so the utility-patent model - where an inventor is driven by a technical problem - does not map cleanly. Instead of a "problem," the touchstone is visual: it is "the visual appearance of the claimed design which is the motivation to combine references" 29555788, and the reason must be grounded in design or appearance rationale rather than a mere procedural conclusion that references "could" be combined 29824027.

What a legitimate, non-hindsight motivation looks like. Drawing from these prosecution histories, a proper motivation:

1. Is articulated with a rational underpinning. An obviousness determination "requires an articulated reasoning with a rational underpinning to support a motivation to combine" 2023-002969U, 29841229. Conclusory statements - for example, that "it's obvious for designers in the field of endeavor... to combine known approaches to common elements" - do not suffice and instead signal impermissible hindsight 29829342. Likewise, labeling a change a "simple substitution of one known design element for another" is inadequate absent some objective reason to combine 29735750.

2. Is supported by the record and tied to the appearance. The examiner (or challenger) must supply "underlying motivational facts" and a "design or appearance rationale," not just a legal conclusion that combination is procedurally possible 29824027, 29572270. Where the modification would arrive at the claimed look only by picking and choosing features in the precise combination the applicant chose, that points to using the application as a "blueprint" or "roadmap" - the hallmark of prohibited hindsight 29608792, 29850616, 29572270.

3. Scales with the visual difference between references. LKQ's most frequently cited passage in these files establishes a sliding-scale burden: "the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight" 29776397, 29795019, 29918349, 2023-002969U, 29824027, 29735750. Practically, where numerous prominent features of the primary reference would have to be modified or removed to reach the claimed design, the motivation is unlikely to be found absent hindsight 29776397, 29771573.

Hindsight red flags in these records. The following recurring fact patterns were treated as indicia of impermissible hindsight rather than genuine motivation: modifying "almost completely" the primary design so only one feature survives 29829342, 29776397; combining references for "products with unrelated purposes" or non-analogous arts 29866979, 29795019; "cherry-picking" a small arranged subset of elements from a much larger set (e.g., four from forty-one) without explaining why a designer would select that particular combination 29918349, 29918348, 29824027; and importing the motivation from references that form no part of the rejection or from the applicant's own disclosure 29606389, 29643987.

Evidence that can affirmatively support motivation. On the other side, motivation can be supported by knowledge generally available to an ordinary designer, not just the references' express text - "[t]he rationale to modify [or] combine the prior art does not have to be expressly stated in the prior art... [it] may be expressly or impliedly contained in the prior art or... reasoned from knowledge generally available to one of ordinary skill in the art" 2023-002969U. Conversely, objective evidence such as a declaration establishing long-felt but unmet need can weigh against a finding that an ordinary designer would have made the modification absent hindsight 29866979.

Bottom line. Because designers work toward an overall visual impression rather than solving a stated technical problem, a valid motivation under LKQ is a record-supported, appearance-based reason - articulated with rational underpinning - that an ordinary designer in the relevant field would have modified the primary reference with the secondary reference's features to produce the same overall visual appearance as the claim. The greater the visual gap between the references and the claimed design, the heavier the burden to show that reason exists without reconstructing the design from the applicant's own disclosure.

Note: One excerpt in these materials still relies on the "basically the same" / Rosen-Durling primary-reference sequencing 29639440; that reasoning is historical and no longer controlling after LKQ, though LKQ retained the general two-reference structure of using a primary reference modified by secondary references, now analyzed flexibly under Graham rather than under the rigid "basically the same" threshold.

### Source Documents:
- 29829342
- 29776397
- 29639440
- 29771573
- 29795019
- 29866979
- 29918349
- 29608792
- 29555788
- 2023-002969U
- 29850616
- 29918348
- 29824027
- 29841229
- 29606389
- 29572270
- 29735750
- 29798750
- 29841323
- 29643987

Below is what the prosecution and appeal excerpts in this corpus show about how functionality (and the related "lack of ornamentality") issues play out under 35 U.S.C. § 171, and how applicants deploy the alternative-designs argument associated with Berry Sterling and Ethicon.

A threshold note on the current legal framework. These are functionality/ornamentality questions under 35 U.S.C. § 171, not the obviousness framework the Federal Circuit reworked in LKQ v. GM (2024). LKQ overruled the Rosen/Durling "basically the same" primary-reference test for § 103; it does not govern the § 171 ornamentality analysis discussed here, so the alternative-designs functionality doctrine below is unaffected by that shift.

What examiners cite as their evidentiary basis. The examiner materials repeatedly ground the rejection in the statutory text and require an evidentiary showing rather than a bare assertion. The statute authorizes patents only for a "new, original, and ornamental design for an article of manufacture" 29816111. Examiners acknowledge that a rejection must be supported: one applicant quotes the standard that rejections "should not be made in the absence of such evidence" 29690145. In several dockets the examiner frames the inquiry around alternative designs directly — for example, "The test for ornamentality is whether alternative designs that could serve the same purpose as the claimed design are possible" 29800010. Examiners also cite the point that de facto functionality is not enough: "The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional" 29928975, 29995475. And in the GUI/article-of-manufacture line the "evidence" is really a subject-matter defect — the design is "not shown embodied in or applied to an article of manufacture" 29816111, which is a distinct flavor of § 171 rejection from true functionality.

Notably, examiners in this corpus often concede that alternatives exist but push back on their significance, citing Federal Circuit language that alternatives are not dispositive: "the mere existence of alternative designs is not dispositive in determining whether a design is primarily ornamental" 29928972, and "The presence of alternative designs may or may not assist in determining whether the challenged design can overcome a functionality challenge" 29928975. This tracks the more skeptical, post-Sport Dimension treatment of alternatives.

How applicants respond. The two dominant moves are (1) submit a Rule 1.132 declaration on ornamental considerations, and (2) argue availability of alternative designs — often citing the Berry Sterling / Ethicon line by name.

The declaration route follows MPEP § 1504.01(c) and 37 CFR 1.132: applicants submit an affidavit "(a) stating the ornamental considerations which entered into the design of the article; and (b) identifying what aspects of the design meet those considerations" 29734075, 29949899. In application 29/734,075 this succeeded — the examiner found the applicant's arguments "persuasive and overcome the rejection under 35 U.S.C. 171" 29734075, relying on a Miller Declaration providing "rebuttal evidence that the design is primarily ornamental, rather than functional" 29734075. In 29/918,931 the examiner likewise withdrew the rejection after the declaration 29918931, though the interview summary shows the examiner had specifically directed the applicant to "outline the considerations that went into the features considered primarily ornamental instead of primarily functional" 29918931.

Do applicants invoke the Berry Sterling / Ethicon factors? Yes — the alternative-designs factor is the most frequently invoked, and at least one applicant cites Ethicon by name. In 29/734,075 the applicant quotes the Federal Circuit that "the availability of alternative designs [is] an important if not dispositive-factor in evaluating the legal functionality of a claimed design," and expressly attributes to Ethicon the proposition that "an inquiry into whether a design is functional should begin with an inquiry into the existence of alternative designs" 29734075. The applicant then walks through the concomitant utility patent to show it "describes many alternative designs that leave room for ornamental variability" 29734075 — precisely the kind of alternatives showing Berry Sterling/Ethicon contemplate.

Other applicants make the same alternatives argument, sometimes citing MPEP guidance and Federal Circuit language rather than the case names. In 29/809,508 the applicant invokes the Federal Circuit's observation that "several ways to achieve the function of an article of manufacture" increases the likelihood of a primarily ornamental purpose 29809508, and argues the claimed functionality "may be achieved by any number of alternatives designs" 29809508. In 29/837,405 the applicant argues "when there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose" 29837405 and points to "a variety of alternative designs that would achieve the desired function" 29837405. In 29/949,899 the applicant frames the same idea through the MPEP: "when it can be shown that the appearance of the claimed design is distinctive over prior art designs and that alternative designs can serve the same function... there is indication that the appearance of the claimed design is not purely dictated by function" 29949899, citing MPEP 1505.01(c). And 29/858,657 combines a declaration with citations to specific "alternative eye drop applicators" to show "the features were a deliberate aesthetic choice, not dictated by utility" 29858657.

A related applicant move is the "view the design as a whole" argument — that functionality of individual features doesn't render the whole design functional: "the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article" 29809508, 29734075. Applicants also invoke the de facto/de jure distinction from MPEP § 1504.01(c): "a distinction exists between the functionality of an article... and the functionality of the particular design" 29995475, 29800010.

Outcomes in this set. The alternatives-plus-declaration approach frequently works: rejections were withdrawn in 29/734,075, 29/918,931, 29/928,972–975 (the C-shape/gear series), 29/928,973, 29/949,899, 29/800,010, and 29/837,405 (the § 171 rejection withdrawn while other grounds continued). But it is not automatic — in 29/683,965 and 29/683,966 the examiner made the rejection FINAL despite submitted alternative designs, stating the amendment and comments "do not overcome the rejection of record" 29683965, and expressly declining to weight the proffered alternatives.

Two cautions. First, several § 171 rejections here are not true functionality rejections at all but article-of-manufacture defects (the GUI/icon cases in 29/749,682, 29/806,256, 29/816,107, 29/816,111, 29/957,778) — there the Berry Sterling/Ethicon alternatives argument is beside the point, and applicants instead amend the title/claim to recite a statutory article. Second, these are all prosecution documents and PTAB appeal excerpts; per the authority hierarchy they are not precedent — they may be "a relevant, though not conclusive, consideration," and the controlling functionality standards remain those set by the Supreme Court and the Federal Circuit (e.g., the Ethicon/Berry Sterling and Sport Dimension line the parties are quoting), not the examiners' characterizations of them.

### Source Documents:
- 29683965
- 29690145
- 29995475
- 29809508
- 29928975
- 29928972
- 29734075
- 29837405
- 29918931
- 29949899
- 29858657
- 29816111
- 29800010

Short answer: The excerpts do not show a clean example of a single design patent application in which an applicant was permitted, under In re Maatita, to claim some drawing figures in two dimensions and other figures in three dimensions of the same design. In fact, the materials point the opposite way on that "mixed" approach.

What the controlling authority actually holds. The Federal Circuit in In re Maatita held that a single two-dimensional plan-view drawing of a shoe bottom satisfied enablement and definiteness 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" CAFC-20180820-In-Re-Maatita-2017-2037. The court distinguished articles by whether the design "is capable of being defined by a two-dimensional, plan- or planar-view illustration," contrasting a rug or placemat with "[t]he design for an entire shoe or teapot," which is "inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar- view drawing" 29685914. The court also expressly said it was "not, of course, suggest[ing] that an applicant for a design of a shoe bottom could not choose to disclose his design from a three-dimensional perspective, as many do" 29685914. So Maatita permits an applicant to elect either a two-dimensional planar disclosure or a three-dimensional disclosure for an article — but that is a choice of how to disclose one design, not authority for mixing 2D and 3D figures of the same design.

The materials that cut against a mixed 2D/3D disclosure. A prosecution record squarely rejects the "mixed" approach: the examiner reasoned that "Maatita also does not suggest that an article known to be three dimensional can be portrayed partly in in three-dimensions and partly in two-dimensions" 29749484. A PTAB panel likewise sustained a rejection where a transfer case gear housing was disclosed in a set of three-dimensional views, finding the article "not capable of being defined or understood by a two-dimensional plan view" and that the applicant could not selectively withhold three-dimensional depth information under Maatita 2020-005018. Another examiner similarly cautioned against reading Maatita to mean "that any three-dimensional article can be disclosed from a single two-dimensional plan view" 29787912.

The closest examples in the corpus — and why they are not what you asked. Several records show applicants successfully invoking Maatita, but in each the successful theory was a single two-dimensional planar disclosure of an article treated as capable of two-dimensional definition, not a hybrid 2D/3D figure set:

- In application 29/729,267, the attorney argued a circuit board "is a two dimensional article" and that omitting depth of the rectangles "would not preclude an ordinary observer from understanding the claimed design" 29729267.
- In Appeal 2019-006933, the applicant argued the design "encompasses a two-dimensional surface of a vehicle button" and was "capable of being sufficiently defined by the single view provided under the reasoning of Maatita" 2019-006933.
- In Appeal 2018-007742, the PTAB reversed the § 112 rejections, holding the applicant's "drawing disclosure satisfies the definiteness and enablement requirements of 35 U.S.C. § 112" for a shading/rosette design shown in planar fashion 2018-007742.

By contrast, application 35/506,398 actually included six three-dimensional views (left side, bottom, right side, top, front, and back) and argued that this fuller disclosure made the design "less complicated for an ordinary observer to understand" than Maatita's single view 35506398. That is a three-dimensional disclosure being defended, not a permitted mix of 2D and 3D figures in one claim.

The governing guidance. The MPEP restates Maatita this way: "Where three-dimensional aspects of a design are not claimed, a single plan- or planar-view may be sufficient to adequately disclose the claimed design" REF-20240101-MPEP-1503-Elements-of-a-Design-Application. Note this is USPTO examiner guidance, not binding law. It frames the choice as depending on whether three-dimensional aspects are being claimed — again framing 2D versus 3D as alternative disclosure strategies rather than a sanctioned hybrid.

Bottom line. On these excerpts, there is no example of one application in which an applicant was allowed to claim some figures in 2D and others in 3D of the same design under Maatita. The Federal Circuit's holding lets an applicant choose a two-dimensional planar disclosure where the design is capable of two-dimensional definition, or disclose in three dimensions — and at least one examiner and one PTAB panel in the corpus indicate Maatita does not authorize disclosing a known three-dimensional article "partly in three-dimensions and partly in two-dimensions" 29749484. One caveat: these prosecution and PTAB materials are not controlling precedent; only Maatita itself (Federal Circuit) and the cited statutes are binding, and none of these sources squarely blesses the mixed approach you describe. If you have a specific application in mind, I can look further, but nothing in the provided excerpts supplies the mixed 2D/3D example.

### Source Documents:
- 29729267
- 2019-006933
- 35506398
- CAFC-20180820-In-Re-Maatita-2017-2037
- 29787912
- 2020-005018
- 29685914
- 29749484
- REF-20240101-MPEP-1503-Elements-of-a-Design-Application
- 2018-007742

When choosing or amending the title to an article of manufacture in a design patent application, a practitioner must weigh several interlocking considerations, drawn from binding rules, Federal Circuit precedent, and USPTO guidance.

Start with the binding regulatory and statutory foundation. A design patent may be granted only to "[w]hoever invents any new, original and ornamental design for an article of manufacture," 35 U.S.C. § 171(a) REF-20240101-MPEP-1503-Elements-of-a-Design-Application. The rule, 37 CFR 1.153, requires that "[t]he title of the design must designate the particular article," and the claim must be in formal terms to "the ornamental design for the article (specifying name) as shown, or as shown and described" REF-20240101-MPEP-1503-Elements-of-a-Design-Application. Because the rule ties the two together, "the title and claim must correspond" REF-20240101-MPEP-1503-Elements-of-a-Design-Application. In prosecution of application 29/764,016, the examiner made this same point, noting that "[t]he title of a design being claimed must correspond to the name of the article in which the design is embodied" 29764016, and suggesting corresponding amendments to the preamble.

The most important consideration is scope. This is controlling Federal Circuit law. In Curver Luxembourg v. Home Expressions (Fed. Cir. 2019), the court held that "claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures" CAFC-20190912-Curver-Luxembourg-Sarl-v-Home-Expressions-Inc-18-2214. There, the applicant had amended the title, claim, and figure descriptions to recite "pattern for a chair" to satisfy the article-of-manufacture requirement, and the design was then confined to that pattern "as applied to a chair" CAFC-20190912-Curver-Luxembourg-Sarl-v-Home-Expressions-Inc-18-2214. The lesson for a practitioner is that the words chosen for the title—especially where the figures alone do not depict the article—can narrow enforceable scope. A design claim "is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract" 29778835, a principle repeated across numerous prosecution records.

The MPEP (examiner guidance, not law, though the Office follows it) explains the public-notice function that flows from this. As the Federal Circuit quoted, "identifying the article of manufacture serves to notify the public about the general scope of protection afforded by the design patent" CAFC-20190912-Curver-Luxembourg-Sarl-v-Home-Expressions-Inc-18-2214, and the title "may contribute to defining the scope of the claim" REF-20240101-MPEP-1503-Elements-of-a-Design-Application (echoed in prosecution, e.g., 29703253).

A second practical consideration is the effect of the title on examination itself—prior art search and classification. Design patent classification "is based on the concept of function or intended use of the industrial designs" 29778374, and "[n]ovelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes" 29778835. A "title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art" and in proper class/subclass assignment REF-20240101-MPEP-1503-Elements-of-a-Design-Application. Conversely, examiners have repeatedly rejected applications where the title was "too ambiguous absent adequate narrative description of the particular article of manufacture pertaining to how the claim functions and its intended use" 29764103. So a title that is too vague—particularly for an article that is "not a common and well know or understood article of manufacture" 29703253—can draw § 112 rejections and requirements to explain the scope, nature, and intended use of the article. Practitioners should note these ambiguity-based § 112 rejections come from a repeated examiner rationale in one art unit's prosecution records, not from any court; they are not controlling authority.

Third, and critically, when amending a title, watch for new matter. An amendment to the disclosure "(such as environment in the title or in broken lines in the drawings), which has no support in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support" 29816954. New matter "is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f)" 29816954 (both binding). A title amendment that broadens or shifts the identified article beyond what the original disclosure supported risks rejection.

Practical takeaways for the practitioner:

- Choose a title that names the article "by the name generally known and used by the public" 29773205, balancing clarity for examination against the scope-limiting effect the words will carry.
- Keep the title, claim preamble, and figure descriptions consistent, as 37 CFR 1.153 and the MPEP require correspondence.
- Recognize that adding an article name (as in Curver) may be necessary to satisfy § 171 but can confine enforcement to that article—consider whether the figures independently depict the article or whether the title supplies the only such identification.
- Avoid overly vague titles that invite ambiguity/§ 112 objections and hinder proper classification and search.
- When amending, ensure the new title finds support in the original disclosure to avoid a § 132 new-matter objection.

One doctrinal note: none of these title/scope principles depends on the Rosen/Durling obviousness framework, which the Federal Circuit's en banc LKQ v. GM (2024) overruled. The § 171 article-of-manufacture requirement, the title-scope relationship in Curver, and the § 112/§ 132 considerations discussed here remain unaffected by that shift.

### Source Documents:
- 29778374
- 29778835
- REF-20240101-MPEP-1503-Elements-of-a-Design-Application
- CAFC-20190912-Curver-Luxembourg-Sarl-v-Home-Expressions-Inc-18-2214
- 29703253
- 29816954
- 29764103
- 29764016
- 29773205

The core issue in your scenario is a classic one: when a solid line and a broken line bound a surface, examiners raise a Section 112(a)/(b) rejection because "a question arises as to exactly what is being claimed" 29847940. Here are the options that emerge from the binding rules, guidance, and prosecution practice.

Start with the governing rule and guidance. Under 37 CFR 1.152 (a binding rule), claimed portions are shown in solid lines and unclaimed subject matter must be shown in broken lines 35510972. The MPEP (examiner guidance, not law) explains the two dispositive conventions that resolve the interstitial-surface ambiguity: "When broken lines cross over the full line showing of the claimed design and are defined as showing environment, it is understood that the surface which lies beneath the broken lines is part of the claimed design," whereas "[w]hen the broken lines crossing over the design are defined as boundaries, it is understood that the area within the broken lines is not part of the claimed design" REF-20240101-MPEP-1503-Elements-of-a-Design-Application. Which characterization you adopt in the specification determines whether the interstitial space is claimed or unclaimed.

Your practical options:

1. Add an express specification statement resolving the interstitial surface. If you want the space unclaimed, add a statement like the one an examiner suggested and applicants have adopted: that "surfaces extending between a solid line and a dashed line are not part of the claimed design" 29847940, or the phrasing an examiner offered — "[t]he unshaded concentric circular surface shown between the solid line and dashed broken line forms no part of the claimed design" 29801107. Conversely, if you want the interstitial surface claimed, state that "surfaces extending between a dotted line[] and a solid line are part of the claimed design" 29847940.

2. Use a boundary line placed on the correct side of the solid/broken lines. Where the design should be bounded, add a dot-dash boundary line, positioned as the examiner in one case instructed: "[t]he boundary line should be placed in side of the solid line and around the edge of the broken lines that form no part of the claim" 29716819. When you add both broken-line types, the specification must visually distinguish them — the MPEP requires that "the description must make a visual distinction between the two purposes" REF-20240101-MPEP-1503-Elements-of-a-Design-Application.

3. Add or amend the broken-line description to identify each line's purpose. The specification must state the purpose of the broken lines — environment, boundary, stitching, etc. — so the scope is clear 29717053. Where the same design uses broken lines for multiple purposes, the description "should clarify which dashed lines form a part of the claim and which ones form no part of the claim" 35511185.

4. Add surface shading to the claimed surfaces. An examiner recommended that "shading should be added to all claimed surfaces" together with the interstitial-surface statement to clarify what is claimed 29801107; one applicant used the reverse approach, leaving surfaces "shown between solid and broken lines without surface shading to clarify if they are claimed" 29716819. Note the caveat: shading "should not be used on unclaimed subject matter shown in broken lines" 29717053.

5. Convert lines to resolve scope, subject to the written-description limit. You may convert solid lines to broken (to exclude) or broken to solid (to include), but any drawing amendment "must meet the written description requirement of 35 U.S.C. 112(a)" 29716252, and new matter is prohibited under 35 U.S.C. 132 and 37 CFR 1.121(f) 29716252. The PTAB has noted that converting originally-disclosed solid lines to broken (or vice versa) generally "would not introduce new matter because such . . . amendment would not introduce subject matter that was not originally disclosed" IPR2023-00658 (this PTAB statement is persuasive only unless designated precedential).

6. Adding an unclaimed boundary line by amendment — the constrained exception. If no boundary line was originally shown, the MPEP permits adding one only where it is a straight broken line connecting the ends of existing full lines and it satisfies written description 35512176. The same guidance warns that "any broken line boundary other than a straight broken line may constitute new matter" 35512176.

Two cautions on wording. Avoid the bare term "unclaimed" without explaining purpose, which one examiner found could "introduce uncertainty as to whether the area is part of a different design or functional subject matter" 29980605. And you cannot add a disclaimer of solid-line subject matter — the MPEP flags that "[a] disclaimer statement directed to any portion of the claimed design that is shown in solid lines . . . is not permitted" REF-20240101-MPEP-1503-Elements-of-a-Design-Application.

Finally, on why precision matters downstream: a district court in the S.D.N.Y. addressed exactly this ambiguity, where the accused infringer argued the patents were "indefinite because the claims do not indicate whether the even-length broken-line portions" within solid-line arcs "are unclaimed boundary lines or portions of the graphical user interface" DCT-2025-01-06_nysd_123-cv-08598_doc94_Shunock_v_Apple_Inc. That decision is persuasive authority only, not binding, but it illustrates the litigation exposure created by leaving the solid/broken interstitial question unresolved during prosecution. Curing the ambiguity now with an explicit specification statement and consistent line/shading treatment is the surest path to overcoming the Section 112 rejection.

### Source Documents:
- 29716819
- 35510972
- 29847940
- 35512176
- 29801107
- 35511185
- 29716252
- 29980605
- DCT-2025-01-06_nysd_123-cv-08598_doc94_Shunock_v_Apple_Inc
- 29717053
- IPR2023-00658
- REF-20240101-MPEP-1503-Elements-of-a-Design-Application