Are hybrid 2D/3D design disclosures sufficiently definite under 35 U.S.C. § 112? The answer is of growing importance because it directly impacts indefinite depth rejections, which remain the most common form of § 112 rejection in design patent applications. Decisions from the Patent Trial and Appeal Board (PTAB) appear to be inconsistent on the issue. In its most recent decision, Ex Parte Silva, Appeal No. 2024-000238 (PTAB Sept. 27, 2024), the Board offers additional arguments and reasoning supporting the view that hybrid 2D/3D disclosures can satisfy the definiteness requirement of § 112. If widely adopted, the holding in Silva has the potential to significantly reduce, if not eliminate, many indefinite depth rejections.
Unfortunately, as discussed below, the reasoning in Silva is questionable. First, Silva appears to establish different standards for purely 2D and 3D designs on the one hand, and hybrid 2D/3D designs on the other. Second, it fails to consider that converting a 3D design to a 2D design changes the perspective of the ordinary observer, changes the scope of the claim, and changes the amount of information that must be conveyed to satisfy the requirements of § 112. Therefore, caution is advised in relying on Silva until more authoritative guidance is provided on the issue.
Ex Parte Silva
In Silva, the applicant claimed a 3D design for a shoe. Seven drawing figures were submitted, two of which (Figures 1 and 7) are shown below.
The examiner rejected the claim as indefinite under § 112 because portions of the shoe bottom (highlighted in gray below) were unclear due to insufficient disclosure.
The examiner argued that the holding in In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018) (discussed below) did not apply because the shoe design was “depicted three-dimensionally, having multiple views shown and shading throughout.” Silva, supra, at p. 2.
The applicant responded that an ordinary observer need only understand the claim scope with reasonable certainty, and “[t]his ‘reasonable certainty’ standard applies whether the claim contains a single two-dimensional drawing or multiple drawings, some of which may contain three-dimensional structures that are only depicted in two dimensions.” Id. at p. 3. The applicant explained that “its Figure 7 is similar to the single plan view of Maatita, but additionally includes contour lines and stippling, adding ‘additional information to the drawing that one skilled in the art can rely upon to understand the scope of the claimed invention.’” Id. Applicant then argued that amending the claim to resemble the shoe claim in Maatita (by canceling Figures 1-6 and claiming only the solid lines in Figure 7) “runs antithetical to the purpose of § 112,” id. at p. 4, because it removes disclosure information from the claim.
The Board agreed with applicant and stated “[i]t is unclear to us how, in this situation, conveying less information to one skilled in art would increase claim clarity.” Id. at p. 4. The Board dismissed the examiner’s attempt to distinguish the facts of In re Maatita (disclosing a shoe bottom design with a single two-dimensional view), explaining that applicant is, similar to Maatita, “not claiming anything other than what is disclosed.” Id. at p. 5. The Board stated “Maatita’s claim covered multiple possible topographies of the shoe sole. So, too, does [applicant’s] claim, at least with respect to the portion of the shoe outsole at issue.” Id.
The Board supported its analysis and conclusion with two principal rationales. First, although the Board appeared to agree that the single planar view of the shoe bottom (Figure 7) did not allow an understanding of all relative shoe bottom heights and depths, the Board believed this missing information did not prevent an understanding of the design with “reasonable certainty.” Id. at p. 5. (citing a previous Board decision, Ex Parte Cioccioni, Appeal 2018-007742 (PTAB March 24, 2023) (discussed further below).
Second, the Board side-stepped the critical distinction made in Maatita between disclosing a design in two dimensions and disclosing a design in three dimensions. In Maatita, the Federal Circuit explained that since the applicant had disclosed the design in only two dimensions, the applicant had chosen the viewpoint from which the ordinary observer should compare two designs for infringement purposes. The Court then stated “[w]e do not, of course, suggest 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. If so, that would be the scope of the claimed design for purposes of judging obviousness, indefiniteness, or infringement. That is not what Maatita has done here.” Maatita, 900 F.3d at 1379.
Responding to this point from Maatita, the Board stated:
“Despite this language in Maatita, we are aware of no legal basis for two-dimensional design claims being distinct from three-dimensional design claims,3 much less for applying different disclosure standards for the two. While Maatita may allude to the possibility of such a difference, it does not make such a broad holding. Absent such a legal basis, we decline to separately define – or separately consider the definiteness of – a “three-dimensional design claim” and a “two-dimensional design claim,” let alone entertain the possibility of a “hybrid” design claim. We address a single design claim in its entirety, and consider whether the overall disclosure provides reasonably certainty of the scope of the claim to one of skill in the art.”
“3We, similarly, are aware of no legal basis for the theory of a “hybrid” two-dimensional and three-dimensional design claim.”
Silva, supra, at p. 6.
Silva is a significant departure from In re Maatita and other PTAB decisions
To understand why Silva is a significant departure from In re Maatita and other PTAB decisions addressing the 2D/3D issue, and why it may be advisable to exercise caution when following Silva, let’s first review the nature of the underlying problem, the facts and holding of In re Maatita, and how relevant legal principles have developed from Federal Circuit and PTAB case law.
Claimed designs typically are disclosed in a hybrid 2D/3D manner for one of two reasons. First, because the applicant intentionally desires a broader claim, or second (and more frequently), because the applicant inadvertently forgot to illustrate the depth or height of certain design features. When faced with a § 112 indefinite depth rejection, applicants usually have a number of potential options. These include (1) arguing that current drawings are adequate, (2) emphasizing the knowledge of a designer of ordinary skill, (3) adding drawings from the appendix or from a parent application, (4) adding shading when supported by other drawings, (5) adding a cross sectional view when supported by other drawings, (6) converting indefinite features to broken lines or surround with a broken line boundary, (7) converting a 3D design to a 2D design by (i) removing shading, (ii) canceling all drawings but one, or (iii) changing the title, (8) arguing that the design feature at issue is not material to the overall design, and/or (9) arguing that the disclosure is adequate under the rationale of In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018).
Some of these options may not be available (e.g., 1-5) and others may be undesirable due to concerns over prosecution history estoppel or the potential of limiting future continuation applications or reissue patents (e.g., 6-8). For that reason, a number of applicants have turned to option (9) as the best available choice, and their arguments have attempted to stretch the boundaries of In re Maatita, 900 F.3d 1369 (Fed. Cir. August 20, 2018) to cover new fact patterns, including hybrid 2D/3D disclosures. As explained below, these arguments have met with mixed results.
In re Maatita
In Maatita, a shoe sole design disclosed in a single 2D view was upheld with unspecified depths treated as permissible breadth rather than a defect. Id. at 1378-79. The Federal Circuit explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” Id. at 1377.
The Court reasoned that even though the shoe bottom design was three dimensional, since the applicant had chosen to disclose the design in a single planar view (shown above), the applicant had established the intended perspective from which infringement should be judged: “Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed.” Id. at 1378. The Court concluded that failure to disclose all possible depth choices would not prevent an ordinary observer, viewing the design from the single perspective chosen by the applicant, from understanding the claimed design for purposes of infringement.
In the Maatita analysis, the court distinguished inherently 3D designs that were disclosed in three dimensions, such as an entire shoe or a teapot, from designs that could be understood from a single 2D view. Such 3D designs generally cannot be fully disclosed with a single, flat (plan or planar) view because their visual appearance changes based on the viewing angle as the 3D article is rotated. Without multiple views, it is difficult, if not impossible, to determine how such 3D designs should look in all three dimensions for comparative purposes. The design may be “infringing from one perspective but not from another,” id. at 1378, and the single plan drawing does not provide the ordinary observer with enough visual understanding to determine infringement.
Post Maatita decisions from the PTAB
Maatita did not expressly address or decide whether certain elements in a 3D design disclosed in 3D can be disclosed in 2D, thereby creating a hybrid 2D/3D design. Post Maatita decisions from the PTAB on this issue have not been entirely consistent. Four months after Maatita was decided, the PTAB decided two cases, Ex Parte Christoph, Appeal 2017-001411 (PTAB December 26, 2018) (Unpublished) and Ex Parte Scott, Appeal 2017-002509 (PTAB December 26, 2018) (Unpublished).
Ex Parte Christoph
In Christoph, the examiner rejected a design for a Motor of a Vehicle as being indefinite because certain features of the 3D design were shown in only 2D (illustrated with arrows below).
The Board reversed the rejection, stating that although the exact orientation and sloping of the 2D features were not illustrated, other perspective views, together with the background knowledge of an ordinary observer familiar with the prior art, was enough to “materially help to elucidate the claimed design.” Id. at p. 6. Specifically, the Board stated “[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.” Id. The Board concluded the examiner erred in determining that the breadth of the claimed design renders it indefinite when viewed from the perspective of an ordinary observer.
Ex Parte Scott
In Scott, the applicant filed a design patent application for a Fuel Injector Cleaner Block 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 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.” Scott, supra, at p. 8. The Board reversed the rejection, finding that the claimed design covered a variety of depths for the claimed features and therefore was not indefinite.
Ex Parte Cioccioni
A little over a year later, the Board decided Ex Parte Cioccioni, Appeal 2018-007742 (PTAB March 24, 2020). In Cioccioni, which involved a design 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 claim was rejected 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.” Cioccioni, supra, at pp. 4-5. 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.” Id. at pp. 5-6.
Ex Parte Butcher
The PTAB came to a different result in Ex Parte Butcher, 2020-5018 (PTAB April 2, 2021). In Butcher, 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, applicant argued (like the argument in Silva, supra) that the alleged indefinite design elements were capable of being understood from the 2D planar drawings submitted in the drawing set. The Board stated the applicant’s position “devolves to an argument that Maatita permits an applicant to claim a design partly in its three-dimensional appearance, and partly in a two-dimensional appearance.” Butcher, supra, at p. 8.
The Board rejected that argument and clarified that Maatita does not endorse claiming parts of a three-dimensional design using only two-dimensional views when the full appearance cannot be understood from those views. Although Maatita permits a two-dimensional plan view to suffice for designs like a shoe sole claimed in two dimensions, it explicitly distinguishes such cases from inherently three-dimensional articles like a full shoe or a teapot, which require full 3D disclosure. The Board concluded that the transfer case gear housing is more like those 3D items and cannot be adequately disclosed through limited planar views.
Ex Parte Behling
Following Ex Parte Butcher, the PTAB decided Ex Parte Behling, Appeal 2021-002021 (PTAB November 1, 2021) (unpublished), which involved an ornamental design for a Light System. The applicant filed a design patent application with three drawing figures, as follows:
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.” Behling, supra, at p. 4.
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.” Id. 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). Id.
Summary Analysis of PTAB Decisions
In sum, in four of the above five decisions post Maatita, the PTAB applied a flexible indefiniteness standard and found ways of allowing 2D disclosure in a 3D design under the rationales that (1) the claim was understandable based on all drawings combined with the background knowledge of an ordinary observer familiar with the prior art (Christoph), (2) the features claimed in 2D were permissible because they covered a variety of depths (Scott and Behling), and (3) the features claimed in 2D would not need to be understood by an ordinary observer to understand the scope of the 3D claim (Cioccioni and Behling).
Notably, none of these decisions addresses the key point made in Maatita: that a single 2D drawing is sufficient only when the entire design is capable of being defined and understood by a 2D plan view and the applicant chooses a single perspective from which an ordinary observer will judge infringement. With only a single view selected, the failure to disclose all possible depth choices does not prevent an ordinary observer from understanding the claimed design for purposes of infringement because all depth variations look the same from that single perspective view.
In contrast, Butcher does consider this key point from Maatita. Butcher emphasizes that the Maatita decision focuses on a claimed article as a whole and analyzes whether the appearance of an entire article is susceptible of being defined and understood by a two-dimensional plan view. Butcher states “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.” Butcher, p. 8. (emphasis in original). Butcher concludes that “the housing is plainly akin to an article such as an entire shoe and a teapot, such that the overall appearance of the article cannot be adequately disclosed where portions of the overall three-dimensional appearance are illustrated in only two dimensions, with only single, plan- or planar views of those portions, leaving the entirety of the appearances of those portions to speculation.” Id.
Return to Silva - Problems and Considerations
These considerations ultimately return us to the rationale and holding in Silva. Unlike the decisions other than Butcher above, Silva does acknowledge the key point in Maatita. However, in the Board’s attempt to minimize and distinguish Maatita by arguing that there is “no legal basis for two-dimensional design claims being distinct from three-dimensional design claims, [footnote omitted] much less for applying different disclosure standards for the two,” Silva, supra, at p. 6, Silva appears to misapprehend the nature of the ordinary observer test. Indeed, Silva arguably does precisely what it condemns by creating a separate test for hybrid 2D/3D designs.
Under the ordinary observer test, a claimed design must be compared to an accused design in its entirety. If a design is claimed in 3D and can only be fully understood in 3D, then it must be disclosed fully in 3D so a complete comparison with the accused design can occur. A design claimed in 3D has no single fixed perspective from which the ordinary observer views the design. Rather, the views are required to convey an understanding of the design to an ordinary observer as the design is rotated on its three axes. However, if a design is claimed in only 2D, then the applicant has established the single point of view from which infringement is judged. There is no rotation of the design and no need to disclose precise depths because different depths will look the same to the ordinary observer from the single perspective.
Under this approach to the ordinary observer test, there is just one single standard – the claimed design is viewed in its entirety and compared to the accused design from the perspective as established by the drawing figure or figures.
In contrast, Silva appears to argue for and establish a double standard. If the design is disclosed completely in 3D or completely in 2D, then the design is viewed in its entirety. However, if the design is disclosed partly in 3D and partly in 2D, then the portions of the design disclosed only in 2D that become indefinite as the design is rotated are ignored. There appears to be no basis in law for this double standard.
Silva’s other rationale is that successfully overcoming the rejection by canceling all figures except Figure 7 and claiming only the solid lines “runs antithetical to the purpose of § 112″ because it is unclear “how conveying less information to one skilled in the art would increase claim clarity.” Id. at p. 4. This reasoning is questionable. The purpose of canceling drawings and removing shading is to shift the ordinary observer’s perspective from a 3D rotational view to a fixed 2D view. Although shifting from a 3D view to a 2D view typically conveys less information, comparing the amount of information conveyed by the two different views is meaningless because the scope of the claim has been changed. Section 112 requires that the disclosure must inform, with reasonable certainty, those skilled in the art about the scope of the invention. Therefore, the relevant issue under § 112 is not whether a 2D claim conveys less information than a 3D claim, but whether the 3D figures in a 3D claim convey enough information from a 3D viewing perspective, and whether the 2D figure in a 2D claim conveys enough information from a 2D viewing perspective.
A potential problem with Silva’s reasoning is that it appears not to consider that cancellation of drawings and removal of shading shifts the perspective from 3D to 2D and changes the scope of the claim. Since typically less information is needed to satisfy a 2D claim than a 3D claim, comparing the amount of information conveyed by a 2D claim and 3D claim is irrelevant, and does not justify modifying section 112’s requirement that the disclosure must inform, with reasonable certainty, those skilled in the art about the scope of the invention.
Conclusion
The Silva decision reflects an important but controversial development in the treatment of hybrid 2D/3D design disclosures under 35 U.S.C. § 112. Although Silva offers a path forward for applicants facing indefinite depth rejections, it does so by minimizing the critical distinction established in Maatita between 2D and 3D disclosures. By appearing to disregard the role of the ordinary observer’s perspective in determining whether a design is sufficiently disclosed, and by arguably creating an implicit double standard for hybrid designs, Silva departs from the logical framework of the ordinary observer test. Until further guidance is provided by either by the Federal Circuit or by USPTO rulemaking, applicants and practitioners should proceed carefully in relying on Silva, recognizing the risk that future tribunals may not adopt its reasoning.
Ultimately, the principles articulated in Maatita remain the most reliable foundation for addressing indefinite depth rejections. Practitioners should continue to evaluate whether a design is capable of being fully understood from a single 2D perspective or whether full 3D disclosure is required to enable an ordinary observer to perceive the design in its entirety. When facing hybrid 2D/3D disclosures, careful consideration should be given to whether arguments can be made under existing precedent without stretching Maatita beyond its intended boundaries. In the absence of clear, binding authority adopting Silva‘s approach, preserving claim validity by adhering closely to the ordinary observer standard as set forth in Maatita remains the most prudent course.
Final Practice Note
Silva’s reference to Cioccioni raises the potential argument that 2D design elements in a 3D design may not have to be fully disclosed in 3D when they arguably are not necessary for an ordinary observer to understand the nature of a 3D design as a whole (in effect, a de minimus argument). While this argument may prove to be persuasive for minor and insignificant design elements, it likely will not prevail when the design elements have a significant impact on the overall design. Further, if continuation or reissue applications are contemplated where portions of the design are to be converted to broken lines, what was once considered an insignificant design element may become more significant depending on what portion of the design is retained in solid lines. Taking an initial position of insignificance may adversely affect the ability to argue otherwise in the future.
