ProSearch Update - Sec. 112 Indefinite Depth Rejections and In re Maatita
Summary: Four Applications mentioned In re Maatita. In the first, the applicant overcame a 112 rejection by amending the description of the figure. In the second, the applicant overcame the Sec. 112 rejection by inserting broken line boundaries and removing shading from the areas not claimed. In the third, the applicant overcame the Sec. 112 rejection by arguing that In re Maatita applied even though Stand Light is inherently three-dimensional and the sole perspective drawing figure has shading. In the fourth, the applicant overcame a 112 rejection by converting indefinite and non-enabled features to broken lines.
App. No. 29/809,323 - Headband for Headlamp - D1,035,946
Summary: Application filed on design for a Headband for Headlamp with a single drawing figure, as shown below. Applicant overcame a 112 rejection by amending the description of the figure.
Rejection: Examiner issued a 112 rejection because “it is not clear if any of the claimed design has raised or recessed portions or if it is wholly two dimensional in nature.” DPP 25. Examiner suggested “Applicant may attempt to overcome the rejection by definitively describing the scope of the claim in the disclosure so long as the amendment meets the written description requirement of 35 USC 112 (a).” Id.
Response: “The Federal Circuit’s decision in In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018), acknowledges that that for generally flat articles, such as a rug, placemat, or a shoe sole, the design is capable of being understood in a single view even if there might be minor variation in the texture (e.g., even if one might have a low pile and the other a high pile (for a rug), might be woven or textured fabric (for a placemat), or might have treads that may be convex or concave (for a shoe sole)). This logic applies equally to a headband, which is also generally flat. By this Amendment, applicant amends the description of the Figure to make it explicit that the headband is depicted in a flattened state.” DPP 18.
“The Figure is a front elevational view of a HEADBAND FOR HEADLAMP in a flattened state, showing the new design;” DPP 17.
Result: The Sec. 112 rejection was withdrawn, and the claim allowed.
App. No. 29/861,333 - Pavilion - D1,037,487
Summary: Application filed on design for a Pavilion with six drawing figures, including figures 1 and 4 as shown below. Applicant overcame the Sec. 112 rejection by inserting broken line boundaries and removing shading from the areas not claimed.
Rejection: Examiner issued a 112 rejection because “the specific depth and contours of the [shaded] features are open to multiple interpretations. For example, these features may be understood as recessed at the same or varying depths or vertical or angled recessed or planar surfaces.” DPP 47.
Examiner suggested “that the elements indicated as indefinite and non-enabling be removed from the claim. The applicant should convert all of the lines in between the top most line of the base and the bottom trim to broken line and remove any surface shading.” DPP 47-48.
Response: “In the present application, the Applicant provided multiple consistent drawings and, like the shoe sole design in Maatita, the three-dimensional pavilion is capable of being understood from a two-dimensional, plan- or planar-view perspective as shown in Fig. 4.” DPP 42.
Final Rejection: Examiner found the design “is not capable of being defined by a two-dimensional, plan or planar view illustration, as evidenced by the 6-view drawing disclosure, which includes perspective view depicting a three-dimensional, structural article as well as surface shading suggesting an indeterminable configuration of multiple adjacent surface elements on the side surface in question.” DPP 37. “Since a pavilion is inherently three-dimensional, the findings in Maatita do not apply to the present claimed design.” Id.
The Examiner also stated “[f]urther, the applicant’s claim that patentability under 112(a) and (b) is based on “reasonable certainty” and ‘infringement purposes’ is incorrect. The standard is for the claimed design to be 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 (or, for applications subject to pre-AIA U.S.C. 112, the applicant) regards as the invention.” Id.
Response: Applicant inserted broken line boundaries and removed shading from the areas not claimed.
Result: The Sec. 112 rejection was withdrawn, and the claim allowed.
Comment: In light of In re Maatita, the Examiner’s argument that “infringement” considerations are not relevant appears to be incorrect. Maatita states:
With this purpose in mind, it is clear that the standard for indefiniteness is connected to the standard for infringement. In the design patent context, one skilled in the art would look to the perspective of the ordinary observer since that is the perspective from which infringement is judged. A design patent is infringed if “an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc); see also Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 528, 20 L. Ed. 731 (1871) (holding that design patent infringement is viewed from “the eye of an ordinary observer, giving such attention as a purchaser usually gives”). Given 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. Thus, 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. 900 F.3d at 1376-1377.
App. No. 29/751,339 – Stand Light - D1,037,521
Summary: Application filed on design for a Pavilion with one drawing figure as shown below (shown horizontally to save space). Applicant overcame the Sec. 112 rejection by arguing that In re Maatita applied even though Stand Light is inherently three-dimensional and the sole perspective drawing figure has shading.
Rejection: Examiner issued a 112 rejection because “[t]he applicant has only shown a partial front and left view of the design. Due to the disclosure consisting of a single perspective view, it is not possible to understand the exact three-dimensional appearance of the overall dimensions, proportions, single foot structure, nor the details of the hinge feature in the middle of the cylinder structure.” DPP 62.
Response: The applicant changed the bracket (hinge) to broken lines. Regarding the remainder of the design, applicant argued “[t]he USPTO has historically issued design patents where a single view of a product is provided to define the claim. (citing In re: Maatita).”
The applicant also argued that “while not precedential decisions, Applicant notes that the Office has issued many patents illustrating only a single view of a design sought be patented, properly finding that the claim covers the ornamental design created by the article when viewed from the claimed view.” DPP 53.
“Examples of such patents include U.S. Patent Nos. D271,982, D292,420, D297,585, D375,191, D390,165, D393,440, D398,609, D401,040, D401,041, D405,140, D405,360, D406,869, D410,719, D413,019, D413,601, and D413,763. Each of these patents is directed to an article that does not disclose an exact three-dimensional appearance of the article and has undefined proportions within the constraints of the claimed design. Understanding of every proportion or an exact three-dimensional appearance is not a prerequisite to definiteness or enablement where the applicant omits certain proportions from the claim. Notably U.S. Patent No. D393,440 directed to a Rear Facing Surface of an Automobile Body includes lines or surfaces that suggest a depth aspect. However, the patent covers the illustrated design, as it may be applied to automobiles of various embodiments having different depth-wise constructions, all of which have a similar appearance according to the rear view provided. DPP 54.
“Another of the above examples, D406,869 to a Back Surface of an Iron-Type Golf Club Head, shows a single drawing that does not include depth as an element of the claim. Instead, the patent covers the illustrated design, as it may be applied to golf club head surfaces of various embodiments having different depth-wise constructions, all of which have a similar appearance from the back. DPP 54.
“Any specific geometric relationships or aspects not identifiable from the views presented in the application drawings are not elements of the claimed design. If they are not elements of the claimed design, further demand for definition of these features is inappropriate and unwarranted. Therefore, Applicant submits that the exact three-dimensional appearance of the leg is not required since only the view of the leg shown in the figure is being claimed.” DPP 55.
Result: The Sec. 112 rejection was withdrawn, and the claim allowed.
Comments: Although the prior allowed applications are not binding precedent, they should be considered at a minimum as persuasive. See Persuasive Value of Prior Design Patents and Applications
App. No. 29/847,013 – Food Thermometer - D1,037,025
Summary: Application filed on design for a Food Thermometer with two embodiments and 18 drawing figures, including drawings 1 and 4 as shown below. Applicant overcame a 112 rejection by converting indefinite and non-enabled features to broken lines.
Rejection: Examiner issued a 112 rejection because “In attempting to apply applicant’s design to the claim, a person of ordinary skill would not be able to tell:
The spatial relationship between any surfaces shown in the rear view in correlation with any other surface shown in any other view;
The surface shape and configuration of any surface in correlation with any surface shape and configuration in this Fig. 4 view is indeterminant. For example, it is indeterminate if any surface shape and configuration is flushed with any other surface shape and configuration or exists in some other spatial or geometric configuration;
Whether any of the surfaces are perpendicular to the line of sight to one another or exist in some other geometric relationship to one another.”
Response: The indefinite and non-enabled features were converted to broken lines and the shading removed, as follows:
Result: The Sec. 112 rejection was withdrawn, and the claim allowed.
