2017-2037

(Serial No. 29/ 404,677)

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

IN RE RON MAATITA

Appeal from the United States Patent and Trademark Office,

Patent Trial and Appeal Board.

BRIEF FOR APPELLEE- DIRECTOR OF THE

UNITED STATES PATENT AND TRADEMARK OFFICE

Nathan K. Kelley
Solicitor

Thomas J. KJ:ause
Deputy Solicitor

William La Marca
Amy J. Nelson
Associate Solicitors

Office of the Solicitor- Mail Stop 8

U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
(571) 272-9035

Attornrys for the Director of the

United States Patent and Trademark Office

October 10,2017
 Design Claim on Appeal

The ornamental design for a Shoe Bottom as shown and described .

. ..-.. ,,...................................,.. "" .._...... ....

~ _

Figure 1

See Appx3; Appx28-29 (claimed subject matter shown in solid lines).

 TABLE OF CONTENTS

I. STATEMENT OF THE ISSUE ................................................... 1

II. STATEMENT OF THE CASE .................................................... 2

A. The Design Claim on Appeal. ............................................... 3

B. The Examiner's Rejection .................................................... 4

1. Enablement........................................... 5

2. Indefiniteness .......................................... 7

C. The Board's Decision ......................................................... 9

III. SUMMARYOFTHEARGUMENT .............................................. 11

V. ARGUMENT .................................................................. 14

A. Standard of Review .......................................................... 14

B. Design Patent Law ........................................................... .15

C. The Board Correctly Determined that Maatita's Design Application

Fails to Satisfy 35 U.S.C. 112 (1st & 2nd paragraphs) ............. 17

1. Maatita's claimed design fails to satisfy 112 (first paragraph)

because his figures show only a two-dimensional view and do
not enable an ordinary designer to make his design as applied
to a three-dimensional shoe bottom without conjecture ......... 18

2. Maatita's claimed "shoe bottom" design is indefinite under

35 U.S.C. 112 (second paragraph) because the precise scope
of the claim cannot be determined ........................ 27

D. Maatita's Remaining Arguments Also Fail ....................... 33

1. The Board's non-precedential panel decision in Katifman

does not bind other Board panels or this Court .................. 33

1
 2. Each patent is issued on its own facts ............................... 35

VI. Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .36

11
 TABLE OF AUTHORITIES
CASES
AK Steel Corp. v. So/lac, 344 F.3d 1234 (Fed. Cir. 2003) ............................ 19, 21, 22, 26

Alcon Research Ltd v. Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014) ......................... 14

Alonso, In re, 545 F.3d 1015 (Fed. Cir. 2008) ............................................................. 14

Auto. Techs. Int'l, Inc. v. BMW ofN. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007) ............ 19

Blum, In re, 374 F.2d 904 (CCPA 1967) ..................................................................... 17

Blumenthal Distrib., Inc. v. Exec. Chair, Inc.,

2010 WL 5980151 (E.D.N.Y. Nov. 9, 2010) ............................................................. 28

Buszard, In re, 504 F.3d 1364 (Fed. Cir. 2007) ............................................................ 29

Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938) ....................................................... 14

DBC, In re, 545 F.3d 1373 (Fed. Cir. 2008) ............................................................... 14

Egyptian Goddess. Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) ............................... 28

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ............... 30, 32

Gartside, In re, 203 F.3d 1305 (Fed. Cir 2000) ............................................................ 14

Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361 (Fed. Cir. 1997) ................................... 14

Gorham Co. v. White, 82 U.S. 551 (1871) ........................................................ 16, 20, 25

Gyurik, In re, 596 F.2d 1012 (CCPA 1979) ................................................................ 35

Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007) .......................................................... 27

James E. Tompkins Co. v. New York Woven Wire Mattress Co.,

159 F. 133 (2 Cir. 1907) ............................................................................................ 18

Jollry, In re, 308 F.3d 1317 (Fed. Cir. 2002) ................................................................ 15

111
Katifman, Ex Parte, 2012-003545 (PTAB March 14, 2014) ......................................... 33

Kotzab, In re, 217 F.3d 1365 (Fed. Cir. 2000) ............................................................. 15

Lovin, In re, 652 F.3d 1349 (Fed. Cir. 2011) ............................................................... 34

MagSil Cotp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377 (Fed. Cir. 2012) ... 19, 24

Mann, In re, 861 F.2d 1581 (Fed. Cir. 1988) ......................................................... 16, 27

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) .......................................... 30

McDanie~ In re, 293 F.3d 1379 (Fed. Cir. 2002) ......................................................... 35

Miyazaki, Ex Parte, 89 USPQ2d 1207 (BPAI 2008) ................................................... 28

Morris, In re, 127 F.3d 1048 (Fed. Cit. 1997) .............................................................. 15

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ...................................... 32

Nett Designs, In re, 236 F.3d 1339 (Fed. Cit. 2001) ..................................................... 35

Oddz!Jn Prods., Inc. v. Just Tqys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) ........................... 28

Oetiker, In re, 977 F.2d 1443 (Fed. Cit. 1992) ............................................................. 27

Packard, In re, 751 F.3d 1307 (Fed. Cit. 2014) .......................................... 15, 28, 29, 30

Philco Cotp. v.AdmiralCmp., 199 F. Supp. 797 (D. Del. 1961) ........................ 18, 19,22

Phillips v. AW'H Cotp., 415 F.3d 1303 (Fed. Cit. 2005) ............................................... 27

Rubitifield, In re, 270 F.2d 391 (CCPA 1959) .................................................. 16, 24, 26

Salsbury, Ex parte, 38 U.S.P.Q. 149 (Comm'r Pat. 1938) ............................................ 18

Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016) .................................. 16

IV
Secure Axcess, UC v. PNC Bank National Association,
848 F.3d 1370 (Fed. Cir. 2017) ................................................................................. 15

Sitrick v. Dreamworks, UC, 516 F.3d 993 (Fed. Cir. 2008) ................................... 18, 19

Sweeney, Ex parte, 123 U.S.P.Q. 506 (BPAI 1959) ...................................................... 18

Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc.,

699 F.3d 1340 (Fed. Cir. 2012) ................................................................................. 18

Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471 (1944) ............. 19, 32

Wands, In re, 858 F.2d 731 (Fed. Cir. 1988) ............................................................... 14

Wands, In re, 858 F.2d 731, 736-7 (Fed. Cir. 1998) ..................................................... 18

Watts, In re, 354 F.3d 1362 (Fed. Cir. 2004) ......................................................... 14, 34

Wertheim, In re, 541 F.2d 257 (CCPA 1976) ............................................................... 35

Yamamoto, In re, 740 F.2d 1569 (Fed. Cir. 1984) ........................................................ 29

Zahn, In re, 617 F.2d 261 (CCPA 1980) ......................................................... 15, 16, 17

Zlet~ In re, 893 F.2d 319 (Fed. Cir. 1989) ...................................................... 27, 29, 30

STATUTES
35 U.S.C. 112 .................................................................................................. passim

35 U.S.C. 112, ~ 1 ........................................................................................ 1, 11, 14

35 U.S.C. 112, ~ 2 ........................................................................................ 1, 14, 27

35 U.S.C. 112, ~ 2 .................................................................................................. 28

35 U.S.C. 112, ~~ 1-2 ............................................................................................. 18

35 U.S.C. 134 ........................................................................................................... 2

v
35 U.S.C. 171 ............................................................................................... 1, 15, 17

RULES
Fed. Cir. R. 32.1 (d) .................................................................................................. 30

REGULATIONS
37 C.P.R. 1.152 .............................................................................................. 4, 8, 22

37 C.P.R. 1.153 (a) .................................................................................... 16, 24,26

37 C.P.R. 41.37(c)(1)(iv) ......................................................................................... 31

Vl
 STATEMENT OF RELATED CASES

The Director is not aware of any other appeal from the Patent Trial and

Appeals Board (Board) for the United States Patent and Trademark Office in

connection with this case that has previously been before this Court. The Director

is also unaware of any other case pending in this or any other court that will directly

affect, or be directly affected, by this Court's decision in this appeal.

Vll
 I. STATEMENT OF THE ISSUE

Section 112 of the Patent Act requires that "[t]he specification shall contain a

written description of the invention ... in such full, clear, concise, and exact terms as

to enable any person skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same." 35 U.S.C. 112, ~ 1. 1 Section 112 also

requires that "[t]he specification shall conclude with one or more claims particularly

pointing out and distinctly claiming the subject matter which the applicant regards as

the invention." 35 U.S.C. 112, ~ 2. Like utility patents, these requirements apply to

design patents. See 35 U.S.C. 171.

Here, the Examiner and Board found that Maatita's "Shoe Bottom" design was

not enabled throughout the full scope of his claim because the two-dimensional

drawings provided by Maatita - which did not reveal relative depths and three-

dimensionality between surfaces - could not be applied to a three-dimensional shoe

bottom by a designer of ordinary skill without having to resort to conjecture. The

Examiner and Board also found that Maatita's claimed design is indefinite because his

disclosure which only shows a two-dimensional plan view of his design fails to inform

an ordinary designer of the scope of Maatita's claim as applied to a three-dimensional

The America Invents Act ("AlA") reformatted the paragraphs of 112 as

subsections and made other changes not relevant to this appeal. See Pub. L. No. 112-
29, 125 Stat. 284, 296 (2011). The citations to 112 herein refer to the statute as it
existed prior to the AlA.
article. Accordingly, the Board found Maatita's disclosure failed to provide enough

detail to enable the claimed invention under 35 U.S.C. 112, ~ 1, and rendered the

claim indefinite under 35 U.S.C. 112, ~ 2.

Thus, the issues on appeal are whether the Board properly determined that

Maatita's claimed design is non-enabling and indefinite.

II. STATEMENT OF THE CASE

Appellant, Ron Maatita ("Maatita") flied design application, No. 29/404,677,

on October 24, 2011 ('677 application) (Appx21-33) 2 covering the design of a "Shoe

Bottom" with two figures 3 showing a single plan view of a shoe bottom design and a

single claim reciting: "The ornamental design for a Shoe Bottom as shown and

described." Because the application disclosed only a two-dimensional plan view of a

design that was to be applied to a three-dimensional shoe bottom, the examiner found

the claimed design was not understandable to an ordinary designer and therefore

rejected Maatita's design claim under 35 U.S.C. 112, first and second paragraph.

Appx62-78 (final action, May 13, 2014). On December 16,2014, Maatita appealed to

the Board under 35 U.S.C. 134. Appx94-96. On March 16,2015, the examiner

2
"Appx _" refers to pages of the Joint Appendix; "Br. at_" refers to pages of
Maatita's opening brief.
3
The Board refers solely to Figure 1 of the '677 application. Appx3. Although
the application includes Figs. 1 & 2, they show the same design from the same
viewpoint. Appx29-30.

2
issued an answer to Maatita's Board brief. Appx111-138 (Answer). The Board agreed

with the Examiner that the curved shapes of the different surfaces of the claimed

shoe bottom design, as applied to a three-dimensional article, could not be determined

with any specificity and the two-dimensional plan view of the design disclosed in the

application did not adequately reveal the relative depth and three-dimensionality

between the surfaces. Thus, the Board affirmed the Examiner's rejection of the

design claim as failing to satisfy the enablement and definiteness requirements of 35

U.S.C. 112, first and second paragraphs. Appx6-8. This appeal followed.

A. The Design Claim on Appeal

The claim on appeal is for "an ornamental design for a Shoe Bottom as shown

and described" in the two-dimensional plan view shown in Figures 1 and 2. Figure

1 (Appx3; Appx29)) is reproduced below (with explanation added):

Solid lines sho''' clai"me(:i l

FIG. 1 subject matter

Figure 1 is a plan view of the shoe bottom.

3
The claimed subject matter is shown with solid lines. See MPEP 1503.02 (III)

(~ 15.50) ("The ornamental design which is being claimed must be shown in solid

lines in the drawing."). As Maatita's application explains, "portions shown in broken

lines are solely for the purpose of illustrating context and form no part of the claimed

design." 4 Appx28. The Examiner objected because Figures 1 and 2 show "two

embodiments" that "are identical in what is claimed" and "differences between

Figures 1 and 2 resides solely in the unclaimed context/ environment of the shoe

bottom." Appx39. On May 1, 2014, Maatita amended the specification clarifying that

both figures 1 and 2 show identically claimed subject matter in two environments.

Appx53-54; Appx113-114.

B. The Examiner's Rejection

The Examiner determined that the claimed design on appeal failed to satisfy

first and second paragraphs of Section 112 because: (i) the design was not sufficiently

described in "full, clear, concise and exact terms" sufficient to enable an ordinary

designer to make the design and (ii) the disclosed design claim failed to "particularly

point out and distinctly claim" the subject matter which Maatita regards as the

4
"Structure that is not part of the claimed design, but is considered necessary to
show the environment in which the design is associated, may be represented in the
drawing by broken lines." MPEP 1503.02 (III); see also 37 C.F.R. 1.152. When
broken lines are used, the specification should include a textual statement indicating
the purpose of the broken lines and stating that they form no part of the claimed
design. MPEP 1503.01 (II).

4
invention. See Appx64 (final); Appx114 (Answer). In particular, the Examiner found

the claimed design was "not enabled because the disclosed design is not

understandable to a designer of ordinary skill in the art without resorting to

conjecture" and was "indefinite because the scope of protection sought is not

disclosed in the specification or understandable as depicted in the drawings."

Appx64; Appx114.

1. Enablement

Regarding enablement, the Examiner found Maatita's claim failed to satisfy

Section 112, ~ 1 because the two-dimensional top view of the design disclosed by the

figures was not understandable to an ordinary designer without engaging in

conjecture. Appx64-65; Appx114. In the Examiner's view, the three-dimensional

aspects of a shoe bottom design could not be reasonably ascertained from the figures

in the '677 application that show only a two-dimensional top view of the design. Id.

Specifically, the Examiner found that the contours, relative placement, and orientation

of the elements delineated by the shoe bottom design were not sufficiently displayed

by the figures. The figures show only a two-dimensional plan view of the design that

could be perceived as a variety of different designs when envisioned in three

dimensions as applied to a shoe bottom. See Appx65-66 (finding that "the isolated

elements could be flush, recessed, raised, covered, flat, and of a variety of contours").

The Examiner produced four illustrations to exemplify different ways that

Maatita's disclosed design could be envisioned in a three-dimensional context based

5
on the two-dimensional disclosure provided in the drawings. The Examiner's four

illustrations are reproduced below:

lr. t~.~ i~tu~-t~ ro tif)f!/;" lfl this Xfw);p/ }W llppfj<:-

Apptfi.tmr's design
App;Jt{~inr? dt;fia:igrt t!W
t.tltema!.i,"'fJ oiemrmta- are
ri&'Ei{JflE:?f l'KlS: guesser.: !full "" ., raised;JJ:1;/!Y1c:e~vr1th
t~f} t-tree eJtNr-e1tls t~e a: tf!e (-tY~~$rs of t~-6 fi:rf. ow;~i
edae of the- wie- e.re- raisOO
t:tt;' #1$ fv-:;;: ov-.7! el8t1Ji.~f;t$.
2e reu;Gr.~f.Jtt wJth nat
~'fl!)tiJl$.

M thiS !Jlt!i'rtl$~ W()f.ip{_r

Ap~Nstd"~ d&Si{;!!. th
tkee -~Ji41!~Hts M il~e ?rig~
or !IJ!l sole""" rocM.slfid
f1lYJ JhQ fi5 uu-JJ etemet;.~
BN3 rafsfKJ it-d~JJ C.Of'!V3lr&
~BP.JfS,
'' ~; fmqlin1liwe
fotlltft'ff.fi:m'0.'t of ihtt- ds1h1
w.oc~1 i'W~<(t;:: t.Jes!gnf.<f'
sppi,Yfn_r; lippeflBnfs de!tign
cr.s Jm h~aga ort a IM:
surlatr?- fn a ~fngtfl }iline
with t!h! !'OS! of lfo!~ bottom
:iflfftlc.~.

See Appx4; Appx70-71; Appx121-122. As these examples show, there is a wide

variety of heights and contours of the shoe bottom design that an ordinary designer

can envision when viewing the two-dimensional plan view drawings provided with

Maatita's application. Appx71 ("applicant's single claim would protect any design that

matches the claimed design when seen from the one, isolated plan view vantage

point."). The Examiner's illustrations also demonstrate that the issue is not simply

the height or depth of the features, but whether those features are convex or concave.

The Examiner determined that Maatita's single claim supported only by a two-

dimensional plan view covers a multitude of designs when applied to a

three-dimensional shoe bottom "including the four examples shown above" that

"would be considered patentably distinct from one another." Appx71; Appx121-

122 ("It is noted that each of the four would be considered patentably distinct even

though Appellant agrees that they are all embodiments of his design."). Accordingly,

6
the Examiner found Maatita's "single claim protects a number of patentably distinct

designs, and covers a large range of possible configurations, which contradicts the

notion of a single claim to a single ornamental design." Appx72. Therefore, the

Examiner determined that Maatita's claim is "not enabled as one [of ordinary skill]

would not know which of the many possible distinct embodiments of the claim

[Maatita's] is in order to make and use [Maatita's] design." Id.; see also Appx118 ("As it

is, any number of markedly different, and patentably distinct designs could be created

by using Appellant's fragment of information as a starting point, but no person of

ordinary skill would have any idea if the design he achieved was in fact Appellant's

. ") .
d es1gn.

2. Indefiniteness

Regarding indefiniteness, the Examiner determined that Maatita's figures,

showing only a two-dimensional plan view of his design, did not properly set forth the

clear scope of three-dimensional protection sought by Maatita and was therefore

indefmite. Appx64-66; Appx114-116. The Examiner explained, when "the shape and

appearance or configuration of the design for which protection is sought cannot be

determined or understood due to an inadequate visual disclosure, [the claim] fails to

particularly point out and distinctly claim the subject matter applicant regards as his

invention in violation of 35 U.S.C. 112, second paragraph." Appx69 (citing MPEP

7
 1504.04); Appx114 (the "claim is indefinite because the scope of protection sought
5
is not disclosed in the specification or understandable as depicted in the drawings.").

Applying that standard, the Examiner found "there would be a multitude of

possible solutions that would match [Maatita's] design [shown] in [the] plan view ... ,

but which, when made ... , would vary radically in appearance from any other

vantage point." Appx70; Appx115 ("these elements and areas are unclear as they

could be interpreted in multiple ways."). And, "for one of ordinary skill to

understand how the design gives form to the three-dimensional article, one must

resort to conjecture" and "when conjecture is employed, no particular meaning

emerges." Appx72; Appx 134 ("Lack of definition in what Appellant is actually

claiming does not allow a patent examiner, a court, or the public to sufficiently

understand the design for examination, infringement or notification purposes.").

The Examiner recognized that Maatita did not seek a design that simply

covered a two-dimensional "ornamental impression, print or picture," but sought a

design to be applied on a three-dimensional shoe bottom article that reveals a

particular visual impression in that context. Appx72 - Appx73, n.4. The Examiner

explained "[w]ith configuration-type designs the article must be sufficiently disclosed

so that there is a particular understanding of the design in the context of the article,"

5 See also 37 C.F.R. 1.152 ("[t]he design must be represented by a drawing ...
and must contain a sufficient number of views to constitute a complete disclosure of
the appearance of the design.")

8
in this case, a three-dimensional shoe bottom. Appx73; Appx136 ("The very fact that

Appellant insists his claim includes configuration-type designs while he is insisting his

design is not a configuration-type design confirms the indefiniteness of the claim.").

The Examiner also found that "the written description is [of] no help in removing the

need for conjecture to understand the drawing[s]." Appx72. Accordingly, because

the Examiner found "there are myriad other configurations that also would match

[Maatita's] single plan view, but which when made into a three-dimensional shoe

bottom, could vary widely in appearance, shape, and contour" he concluded that

Maatita had "not particularly pointed out and distinctly claimed his invention" as

required by 35 U.S.C. 112, ~ 2. See Appx70-71.

C. The Board's Decision

The Board affirmed the Examiner's rejection of Maatita's design claim on

appeal. Appx2-8. The Board characterized the key issue as whether Maatita's "claim

is permissibly broad or impermissibly non-enabled and indefinite." Appx3.

The Board cited the Examiner's illustrations in which he provided examples of

varying tread depth of the sole bottom design depending on how the design is

understood by an ordinary designer. Appx4; Appx121-122. The Board agreed with

the Examiner that each of the illustrated designs are "patentably distinct, such that the

claim covers multiple patentably distinct designs." Appx4. The Board also

recognized that Maatita did "not refute that the claim covers the Examiner's various

depicted embodiments" and did "not refute that the covered embodiments may be

9
patentably distinct" (AppxS), but simply argued that that the depth of the tread of the

shoe bottom design was not a limitation of his claim. AppxS. According to Maatita

"the depth of the tread, ... involves no 'particular creativity' and is often selected

based on 'functional considerations' such as traction needed for an intended use"

(AppxS) and since the ordinary designer has "discretion as to what may be included

within those portions and still remain within the claim scope" Maatita argued that it

did not force a designer to resort to conjecture. AppxS-6 (Board noting that Maatita

argued "a designer having 'some discretion as to how to implement a given claimed

design' does not rise to the level offorcing a designer to resort to conjecture."). 6 Thus,

according to Maatita, the requirements of 35 U.S. C. 112 were satisfied by his figures

that showed only a two-dimensional plan view disclosure of his design.

Rejecting those arguments, the Board found that Maatita's so-called

"discretion" of the designer in implementing the claimed design would, in fact, require

conjecture since the specification lacks exact terms that would enable an ordinary

designer to make the claimed design as applied to a three-dimensional shoe bottom

article. Appx7. The Board emphasized that the first paragraph of Section 112

requires "full, clear, concise and exact terms to enable any person skilled in the art" to

make and use the invention, yet it found such clarity and exactness to be missing here.

6
See also Appx104 (Maatita argued that "the fact that a designer has some
discretion as to how to implement a given claimed design" does not require "any
conclusion that cot!fecture must be undertaken to understand the design.").

10
Appx6 (citing 35 U.S.C. 112, ~ 1) (emphasis in original). The Board was

unpersuaded by Maatita's argument that the tread depth in shoe design required no

particular creativity and was selected based on functional considerations. To that end,

the Board found the claimed surfaces lack the exactness and clarity of a written

description required by 35 U.S.C. 112, ~ 1 sufficient to describe whether the surfaces

are flat, concave, or convex. Appx7. That is, the two-dimensional plan view

presented in Maatita's figures was simply inadequate to clearly define the scope of the

claimed subject matter which must be understood as applied to a three-dimensional

shoe bottom. Since multiple different distinct designs can result when applying

Maatita's two-dimensional disclosure to a three-dimensional shoe bottom, not only

did the Board find the disclosure failed to enable the claimed design, but that "same

lack of clarity and detail also makes the scope of the claim indefinite under 35 U.S. C.

112 second paragraph." Appx7.

III. SUMMARY OF THE ARGUMENT

The Board properly determined that Maatita's design claim for a "Shoe

Bottom" in the '677 application is unpatentable under 35 U.S.C. 112 because the

drawings, which disclose only a two-dimensional plan view of the claimed design:

(i) lack sufficient detail to enable an ordinary designer to make the design on a three-

dimensional shoe bottom and (ii) fail to inform the ordinary designer and public of

the precise scope of the claim.

11
 There is no dispute that Maatita intends his claimed design to be applied to a

three-dimensional shoe bottom. But Maatita's disclosure only reveals a two-

dimensional plan view of his design that does not enable an ordinary designer to make

the claimed design as applied to a three-dimensional shoe bottom. Instead, when

looking at Maatita's two-dimensional plan view drawings, an ordinary artisan would

have to imagine the visual impression of that design as applied to a three-dimensional

shoe bottom. Since there are a wide variety of possible configurations of the design

that could be imagined when it is applied to a three-dimensional shoe bottom, an

ordinary designer would be forced to engage in conjecture (i.e., speculation) to

determine which design is actually claimed. In fact, the Examiner illustrated examples

of multiple distinct embodiments of the design when applied to a three-dimensional

shoe bottom.

Maatita does not dispute that his claim reads on each of the examples

illustrated by the Examiner, but he argues that his claim is simply broad and he is

entitled to claim his invention broadly. But Section 112 of the Patent Act requires

more from his disclosure. Maatita's disclosure must enable his claimed design across

its full breadth. That means an ordinary designer looking at Maatita's disclosure must

be enabled to make Maatita's claimed design in the three-dimensional context without

having to resort to conjecture. Maatita's disclosure fails to meet that requirement.

Maatita's two-dimensional plan view drawings do not show a designer how to apply

his design to a three-dimensional shoe bottom. Because an ordinary designer looking

12
at Maatita's two-dimensional drawings would be forced to guess which design (out of

many possible distinct designs) is being claimed as applied to a three-dimensional shoe

bottom, the disclosure does not adequately enable one to make the claimed design as

required by Section 112, first paragraph.

That same lack of clarity resulting from Maatita's inadequate disclosure is also

the reason his claim is indefinite under Section 112, second paragraph. Because an

ordinary designer looking at Maatita's two-dimensional plan view drawings must

speculate as to how the claimed design is applied in the context of a three-dimensional

shoe bottom, the precise scope of his claim cannot be determined with sufficient

clarity to satisfy Section 112, second paragraph. Again, Maatita does not dispute that

his drawings could lead to many possible distinct embodiments of three-dimensional

shoe bottom designs. He simply argues that he is entitled to a single claim that covers

all of them. Not only are Maatita's two-dimensional plan view drawings inadequate to

clearly disclose the scope of his claim, but the fact that he seeks to cover many distinct

designs with a single ambiguous claim conflicts with the rule that design patents can

only have a single claim covering a single distinct design. If Maatita sought patent

coverage for the many distinct designs that can be imagined from his drawings, he

could provide drawings of each design and submit them in separate applications.

Instead, Maatita seeks to circumvent that rule by submitting a vague claim that causes

confusion as to which design his claim actually covers. That type of claiming is

prohibited by Section 112.

13
 Thus, the Board properly determined that Maatita's disclosure failed to provide

enough detail to enable the claimed invention under 35 U.S.C. 112, ~ 1, and also

rendered the claim indefinite under 35 U.S.C. 112, ~ 2.

IV. ARGUMENT

A. Standard of Review

On appeal, Maatita must show that the Board committed reversible error. In re

Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). Legal conclusions are reviewed de novo

and fact findings are reviewed for substantial evidence. In re Gartside, 203 F.3d 1305,

1315-16 (Fed. Cir 2000); see also In re DBC, 545 F.3d 1373, 1377 (Fed. Cir. 2008).

Whether the disclosure is enabling, is a legal conclusion based upon underlying

factual inquiries. See Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361, 1365 (Fed. Cir.

1997) (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)); see also Alcon Research Ltd. v.

Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014) (whether a claim is enabled under 35

U.S.C. 112 is a question of law that may be based on underlying fact findings).

This Court upholds the Board's fact findings if substantial evidence in the

record supports them. Gartside, 203 F.3d at 1315-16; see also In re Alonso, 545 F.3d

1015, 1019 (Fed. Cir. 2008). Substantial evidence is "such relevant evidence as a

reasonable mind might accept as adequate to support" the conclusion reached. Consol.

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). And it is "something less than the

weight of the evidence but more than a mere scintilla of evidence." In re Kotzab, 217

F.3d 1365, 1369 (Fed. Cir. 2000). "[W]here two different, inconsistent conclusions

14
may reasonably be drawn from the evidence in record, an agency's decision to favor

one conclusion over the other is the epitome of a decision that must be sustained

upon review for substantial evidence." In re Jollry, 308 F.3d 1317, 1329 (Fed. Cir.

2002).

Determining indefiniteness under 35 U.S.C. 112 is a subset of claim

construction, which is a question oflaw. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.

2014). Even though claim construction, as a question oflaw, is ordinarily reviewed de

novo, during prosecution claims are given their "broadest reasonable interpretation,"

consistent with the specification which this Court reviews to determine whether it is

reasonable. See In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). See also Secure

Axcess, LLC v. PNC Bank National Association, 848 F.3d 1370, 1382, n.7 (Fed. Cir.

2017) (re-affirming Morris).

B. Design Patent Law - Generally

A design patent may be obtained for a "new, original and ornamental design

for an article of manufacture," subject to the conditions and requirements of

title 35. 35 U.S.C. 171. The design may be embodied in an entire article of

manufacture or only a portion thereof. In re Zahn, 617 F.2d 261, 267 (CCPA 1980).

The subject matter of a design patent may relate to the surface ornamentation applied

to an article, the configuration or shape of the article, or a combination of the two. Id

at 268. See also MPEP 1502 (citing Zahn). As the Supreme Court phrased it, "[a]

patentable design 'gives a peculiar or distinctive appearance to the manufacture, or

15
article to which it may be applied, or to which it gives form."' Samsung Electronics Co.)

Ltd v. Apple Inc., 137 S. Ct. 429 (2016) (citing Gorham Co. v. White, 82 U.S. 551, 525

(1871)).

A design patent can contain only a single claim, which must be "to the

ornamental design for the article (specifying name) as shown, or as shown and

described." 37 C.F.R. 1.153(a) ("More than one claim is neither required nor

permitted."). While a design patent may illustrate multiple embodiments of a single

design, it is well setded that it cannot include more than one claim. In re Rubitifield,

270 F.2d 391, 396 (CCPA 1959). And, if a single design application or patent

discloses multiple embodiments they must be patentably indistinct, i.e., involve a

single inventive concept. Id. ("The fact that it may be permissible ... to illustrate

more than one embodiment of a design invention does not require or justify more

than one claim. Such embodiments can be presented only if they involve a single

inventive concept; and such a concept can be protected by a single claim.").

The claim in a design patent is limited to the ornamental design of a specified

article "as shown" or "as shown or described" in drawings. 37 C.F.R. 1.153 (a).

That is, the scope of a design claim is limited by the drawings disclosed. See In re

Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ("Design patents have almost no scope.

[They are] limited to what is shown in the application drawings."). The drawings of a

design patent also provide the description of the invention. In re Daniels, 144 F.3d

1452, 1456 (Fed. Cir. 1998). Solid lines in drawings show the claimed design, whereas

16
broken lines are generally not part of the claimed subject matter. See Zahn, 617 F.2d at

266-267; MPEP 1503.02 (III). 7

C. The Board Correctly Determined that Maatita's Design Claim Fails to

Satisfy 35 U .S.C. 112 (1st and 2nd paragraphs)

Design patents are subject to the same statutory requirements as utility patents,

including enablement and definiteness. See 35 U.S.C. 171. 8 Section 112 of the

Patent Act, which also applies to design patents under Section 171, states:

The specification shall contain a written description of the invention,

and of the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the same,
and shall set forth the best mode contemplated by the inventor of carrying out
his invention.

The specification shall conclude with one or more claims particularly

pointing out and distinctly claiming the subject matter which the applicant
regards as his invention....

See 35 U.S.C. 112, ,-r,-r 1-2 (emphasis added). Thus, as recited in the flrst and second

paragraphs of Section 112, a design claim -like all patent claims -must be: (i) enabled

7
Broken lines can be used to disclose structure that is not part of the claimed
design but to show environment, including any portion of an article of manufacture in
which the design is embodied that is not part of the claimed design. In re Blum, 3 74
F.2d 904, 907 (CCPA 1967); MPEP 1503.02 (III) (citing Zahn). When broken lines
are used, the speciflcation should include a statement indicating the purpose of the
broken lines and that they are not part of the claimed design. See MPEP 1503.01 (II).

8
35 U.S.C. 171 states "[t]he provisions of this title relating to patents for
inventions shall apply to patents for designs, except as otherwise provided."

17
and (ii) definite. See 35 U.S.C. 112, ~~ 1 and 2. As discussed further below, Maatita

failed to meet both of these requirements.

1. Maatita's claimed design violates 112 (first paragraph)

because his figures show only a two-dimensional view that does
not enable an ordinary designer to make his design as applied to a
three-dimensional shoe bottom without conjecture

Under Section 112, "[t]he specification must enable one of ordinary skill in the

art to practice the claimed invention without undue experimentation." Transocean

Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1355 (Fed.

Cir. 2012)(citation omitted); see also Sitrick v. Dreamworks, ILC, 516 F.3d 993, 999 (Fed.

Cir. 2008); In re Wands, 858 F.2d 731, 736-7 (Fed. Cir. 1998). In the design context,

that means "[a] design patent must disclose the configuration and complete

appearance of the article in which the design is embodied so fully, clearly and with

such certainty as to enable those skilled in the art to make the article without being

forced to resort to conjecture." See Philco Cotp. v. Admiral Cotp., 199 F. Supp. 797, 801

(D. Del. 1961) (citing Ex parte Salsbury, 38 U.S.P.Q. 149 (Comm'r Pat. 1938); Ex parte

Sweenry, 123 U.S.P.Q. 506 (BPAI 1959);]ames E. Tompkins Co. v. New York Woven Wire

Mattress Co., 159 F. 133 (2 Cir. 1907)). 9

9
Enablement and definiteness overlap more in the design context than they
might in the context of a utility patent. That is, "since the drawing disclosure and any
narrative description in the specification are incorporated into the claim by the use of
the language 'as shown and described,' any determination of the scope of protection
sought by the claims is also a determination of the subject matter that must be
enabled by the disclosure." See MPEP 1504.04 (I)(A) (citing Philco and Salsbury to
explain "if the appearance and shape or configuration of the design for which

18
 Further, "the full scope of the claimed invention must be enabled." See Sitrick

v. Dreamworks, ILC, 516 F.3d 993, 999 (2008) (citing Auto. Techs. Int'4 Inc. v. BMW of

N Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007)). The "rationale for this statutory

requirement is straightforward," i.e., "[e]nabling the full scope of each claim is 'part of

the quid pro quo of the patent bargain."' Id. (citing AK Steel Cotp. v. Sollac, 344 F.3d

1234, 1244 (Fed. Cir. 2003)). The same rationale applies in the design context. See

Philco Cotp., 199 F. Supp. at 801 ("Sufficient disclosure has been said to be the quid

pro quo for the limited monopoly granted by the government. It is necessary so that

those skilled in the art may learn the invention and practice it when the period of

monopoly is over.") (citing Universal Oil Products Co. v. Globe Oil & Refining Co., 322

U.S. 471 (1944)). Thus, "a patentee chooses broad claim language at the peril of

losing any claim that cannot be enabled across its full scope of coverage." MagSil

Cotp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012).

Here, Maatita's disclosure fails to satisfy that requirement. Maatita seeks a

claim for a design as applied to a three-dimensional article, but his disclosure only

provides a two-dimensional view of his design. As the examiner and Board found,

protection is sought cannot be determined or understood due to an inadequate visual

disclosure, then the claim which incorporates the visual disclosure, fails to particularly
point out and distinctly claim the subject matter [the inventor(s)] regard as their
invention" and "fails to enable a designer of ordinary skill in the art to [make an
article having] the shape and appearance of the design for which protection is
sought.").

19
Maatita's two-dimensional plan view drawings fail to show an ordinary designer how

to make Maatita' s claimed design as applied to a three-dimensional shoe bottom

without having to resort to conjecture. Appx7 ("We are not convinced that allowing a

designer to have 'some discretion' in implementing a claimed design, in this instance,

is anything but requiring that the designer resort to conjecture to understand or

implement the claimed design."); Appx130 ("Appellant's disclosure does not enable

even one application of the design in a way that would inform the public of his

invention. The reader of this claim cannot know what the shoe bottom would look

like with Appellant's design applied to it, without employing conjecture.").

If Maatita sought only to claim his design as applied to a two-dimensional

article (e.g., a print on a flat surface) his existing drawings would sufficiently enable an

ordinary designer across the full scope of such a claim. But that is not what Maatita

seeks. Instead, Maatita seeks a patent for a design as it is applied to a three-

dimensional shoe bottom. That necessarily means there will be three-dimensional

surface characteristics impacting the visual impression of the design. And, for a

design to be patentable it must give "a peculiar or distinctive appearance to the

manufacture, or article to which it may be applied, or to which it gives form." See

Gorham Co. 81 U.S. at 525. That means for Maatita's design to be patentable, his

disclosure must provide a distinctive appearance to the three-dimensional shoe

bottom to which his design is to be applied.

20
 Maatita argues that he intends his claim to encompass the multiple examples of

different three-dimensional shoe bottom designs as illustrated by the Examiner. Br. at

18 ("In fact, the Examiner himself even articulated several different ways in which the

design could be implemented."); Appx4-5 (Recognizing that Maatita "admits that the

claim covers multiple embodiments."); see also Appx104. But as the Examiner

demonstrated, Maatita's two-dimensional plan view disclosure could be applied to a

three-dimensional shoe bottom in a variety of distinct configurations and thus an

ordinary designer would not know how to make the design. Appx118; Appx121-122.

Simply put, Maatita's disclosure fails to sufficiently inform the public of, and enable,

the claimed design and thus fails to serve the important quid pro quo policy of the

patent bargain. See, e.g.,AK Steel Corp., 344 F.3d at 1244.

The problem lies with Maatita's figures, which simply show a two-dimensional

plan view of his design that can be construed in a variety of ways when an ordinary

designer imagines how to apply his design to a three-dimensional article. As the

Examiner illustrated (at Appx4) and the Board found, "the claim lacks the exactness"

required by the disclosure because "it is unclear whether the claimed surfaces are flat,

concave, or convex." Appx7. By providing drawings that show only a two-

dimensional plan view of his design, Maatita's disclosure does not clearly delineate

how it is applied to a three-dimensional shoe bottom. As a result, the ordinary

designer is forced to speculate, or in the Examiner's words, "forced to engage in

conjecture" to determine which of the many possible distinct designs is actually being

21
claimed. See Appx123 ("[A] designer of ordinary skill in the art is forced to add his or

her own ideas beyond what is understandable in the drawing disclosure."). As the

Examiner found, "any number of markedly different, and patentably distinct, designs

could be created by using !Maatita's] fragment of information as a starting point, but

no person of ordinary skill would have any idea if the design he achieved was in fact

!Maatita's] design." Appx118. If such speculation/ conjecture or experimentation is

required, the disclosure 10 does not enable an ordinary designer to make the claimed

invention as required by Section 112, first paragraph. See Philco Corp. v. Admiral Corp.,

199 F.Supp. at 801 ("A design patent must disclose the configuration ... so fully,

clearly and with such certainty as to enable those skilled in the art to make the article

without being forced to resort to conjecture."); see a/soAK Steel Corp., 344 F.3d at 1244

(The "enablement requirement is satisfied when one skilled in the art, after reading

the specification, could practice the claimed invention without undue

experimentation.").

10
Maatita has only provided a drawing with single two-dimensional view, but at
the same time, seeks a design as applied to a three-dimensional article. The Agency's
regulations make clear that "[t]he design must be represented by a drawing ... and
must contain a sufficient number of views to constitute a complete disclosure of the
appearance of the design." 37 C.F.R. 1.152. Not only does Maatita's application fail
to satisfy Rule 152's drawing requirement, but that deficiency also illuminates why
Maatita's application does not satisfy 35 U.S.C. 112.

22
 Notably, Maatita does not dispute that the two-dimensional plan view of his

design shown in his figures can be construed in a wide variety of ways when applied in

the three-dimensional context (e.g., with varied tread depths and surface heights as the

Examiner exemplified). See Br. at 18 (recognizing the Examiner "articulated several

different ways in which the design could be implemented."). Nor does Maatita

dispute that he seeks to have his claim cover the various patentably distinct designs

that the Examiner illustrated as possible interpretations of his claim. See, e.g., AppxS

(Board noting that Maatita "does not refute that the claim covers the Examiner's

various depicted embodiments, and does not refute that the covered embodiments

may be patentably distinct.") (citing Appx104). Instead, Maatita asserts that the two-

dimensional plan view disclosure of his design is good enough because he is simply

claiming his design broadly. See, e.g., Br. at 10 (asserting the Board "was obligated to

presume that only the features shown by Maatita in his drawings constituted his

invention."); Appx104 (asserting "a patent applicant has the right to exclude features

which are not intended to be part of the claimed design.").

In Maatita's view, the Agency incorrectly used Section 112 to force him to

unnecessarily narrow his claim. Br. at 17 ("Maatita was not required by the Patent

Statute to include additional features, which he did not intend to be part of his

claimed design, in his drawings."). But that is not the reason for the Agency's

rejection. Contrary to Maatita's argument, he is not free to define his invention with

uncontrolled breadth, i.e., with a single claim covering multiple distinct designs. See In

23
re futbitifield, 270 F.2d at 396 ("no useful purpose could be served by the inclusion of

more than one claim in a design application or patent."); see also 37 C.F.R. 1.153(a)

("More than one claim is neither required nor permitted."). Further, while Maatita

may seek to claim his invention broadly, such a claim strategy carries with it a

responsibility to provide a disclosure that enables his claim across its full scope.

MagSil Corp., 687 F.3d at 1380-81 ("a patentee chooses broad claim language at the

peril of losing any claim that cannot be enabled across its full scope of coverage.").

Here, Maatita has failed to provide such a disclosure.

Maatita also erroneously alleges that "no finding was made below that 'any

person skilled in the art' could not make Maatita's design for a shoe bottom" or "that

such a person would be incapable of producing at least one embodiment that would

result in the illustrated combination of design features." Br. at 18. But the Examiner

expressly stated "that one of ordinary skill would not be able to produce the presently

claimed design" and that it "could not be produced unless one of ordinary skill adds

his own invention to it." Appx123.

And, contrary to Maatita's assertion that "the Examiner himself even

articulated several different ways in which the design could be implemented," see Br. at

18, the Examiner's illustration of multiple possible distinct embodiments was not to

show the claim was sufficiently enabled, but to show the level of conjecture that

would be required to make Maatita's claimed design as applied to a three-dimensional

shoe bottom relying on his minimal two-dimensional plan views in the disclosure. See

24
Appx123 (explaining that various interpretations of the claim were demonstrated to

show that "[n]one of the articulated interpretations are enabled by the disclosure, and

the claim scope cannot encompass subject matter that does not enable what is

claimed."). Indeed, any one of a variety of distinct three-dimensional shoe bottom

designs could result from Maatita's single two-dimensional plan view disclosure, and

an ordinary designer would have to engage in conjecture to determine which design is

actually claimed in order to make it. As the Examiner explained, the fact that

Maatita's "non-specific ... disclosure forces one of ordinary skill to use his own

imagination to complete the design" is conclusive evidence that the claim is not

enabled. See Appx119. Maatita's minimal two-dimensional plan view disclosure

simply fails to give a clear and distinctive appearance of his claimed three-dimensional

shoe bottom design. See Gorham Mfg. Co., 81 U.S. at 525 (A patentable design "gives a

peculiar or distinctive appearance to the manufacture, or article to which it may be

applied, or to which it gives form.").

To be clear, the issue is not whether an ordinary designer could make the

various distinct designs exemplified by the Examiner, but whether that designer would

know which design to select out of many distinct possibilities that are being claimed in

order to make it. As the Examiner and Board found, because an ordinary designer in

this case would have to resort to conjecture (or speculate) to determine which design

is actually being claimed, that designer would not be enabled to make the claimed

design. See Phi/co, 199 F. Supp. at 801 ("A design patent must disclose the

25
configuration and complete appearance of the article in which the design is embodied

so fully, clearly and with such certainty as to enable those skilled in the art to make the

article without being forced to resort to conjecture."); see also AK S tee! Cotp., 344 F. 3d

at 1244 (The "enablement requirement is satisfied when one skilled in the art, after

reading the specification, could practice the claimed invention without undue

experimentation.").

Moreover, Maatita's attempt to procure a design claim that encompasses a

plurality of patentably distinct designs conflicts with the single claim requirement for

design patents. That is, if Maatita wishes to seek design coverage for each of the

many patentably distinct designs that could be imagined from his two-dimensional

plan view drawings as applied to a three-dimensional shoe bottom, he cannot include

them in a single design application, but must instead disclose and claim each one

individually in separate applications. See, e.g., Rubinjield, 270 F.2d at 396 ("no useful

purpose could be served by the inclusion of more than one claim in a design

application or patent."); see also 37 C.P.R. 1.153(a) ("More than one claim is neither

required nor permitted."). And, Maatita would be required to disclose his multiple

distinct inventions with sufficient clarity to enable each one, which he has not done.

2. Maatita's claimed "shoe bottom" design is indefinite under

112 (second paragraph) because the precise scope of the claim
cannot be determined

The USPTO bears responsibility for testing claims for definiteness prior to

issuance. See, e.g., In re Zlet~ 893 F.2d 319, 321-22 (Fed. Cir. 1989). Thus, when

26
applying 112 during examination of a patent application, the Agency carries an initial

procedural burden of presenting a prima facie case that a pending claim is indefinite.

Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007) ("In the prosecution of a

patent, the initial burden falls on the PTO to set forth the basis for any rejection, i.e., a

prima facie case."); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he

examiner bears the initial burden, on review of the prior art or on any other ground,

of presenting a prima facie case of unpatentability.").

As the first step in the indefiniteness analysis, the Agency determines the scope

of the claims. See Zleti_; 893 F.2d at 321 (discussing generally claim interpretation

during patent examination). The scope of the claims are determined "not solely on

the basis of the claim language, but upon giving claims their broadest reasonable

construction 'in light of the specification as it would be interpreted by one of ordinary

skill in the art."' Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane)

(citation omitted). In the context of designs, the claim "is limited to what is shown in

the applications drawings." See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ("The

claim at bar, as in all design cases, is limited to what is shown in the application

drawings."). See also 37 C.P.R. 1.153 (a). Thus, when construing a design claim, the

focus is on the overall appearance and visual impression of the drawings.U

11
See, e.g., Blumenthal Distrib., Inc. v. Exec. Chair, Inc., 2010 WL 5980151, at *5
(E.D.N.Y. Nov. 9, 2010) (citing Odd:tJn Prods., Inc. v. Just Tqys, Inc., 122 F.3d 1396,
1405 (Fed. Cir. 1997). See also Egyptian Goddess. Inc. v. Swisa, Inc., 543 F.3d 665, 679
(Fed. Cir. 2008) ("Given the recognized difficulties entailed in trying to describe a

27
 Applying the broadest reasonable interpretation of a claim, the Agency

establishes a prima facie case of indefiniteness with a rejection explaining how the

metes and bounds of a pending claim are not clear. See In re Packard, 751 F.3d 1307,

1310 (Fed. Cir. 2014) (per curiam); see also Ex Parte Mfyazaki, 89 USPQ2d 1207, 1211

(BPAI 2008) (precedential) ("if a claim is amenable to two or more plausible claim

constructions, the USPTO is justified in requiring the applicant to more precisely

define the metes and bounds of the claimed invention by holding the claim

unpatentable ... as indefinite")P In the context of a design, "if the appearance and

shape or configuration of the design for which protection is sought cannot be

determined or understood due to an inadequate visual disclosure, then the claim,

which incorporates the visual disclosure, fails to particularly point out and distinctly

claim the subject matter the inventor(s) regard as their invention, in violation of the

second paragraph of 35 U.S.C. 112." See MPEP 1504.04 (I)(A).

Thus, during prosecution, an indefiniteness rejection by the Agency begins

what is intended to be an interactive process in which the applicant has the

design in words, the preferable course ordinarily will be for a district court not to
attempt to 'construe' a design patent claim by providing a detailed verbal description
of the claimed design.").
12
The Board's decision in M!Jazaki, which remains Board precedent, provides an
example in which the Board affmed an indefiniteness rejection of a claim containing
words or phrases whose meanings were unclear, i.e., the approach approved in
Packard.

28
opportunity to respond to the examiner by amending the claims or by providing

evidence or explanation that shows why the claims are not indefinite. Packard, 751

F.3d at 1311-12. The Agency plays an important role in ensuring that proposed

patent claims are clear, unambiguous, and drafted as precisely as the art allows. Claim

clarity keeps the rights afforded by a patent commensurate with the invention's

contribution to the art Packard, 751 F.3d at 1313. Interpreting the claims as broadly

as reasonable during prosecution allows the Agency to fulfill this important role. See

In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (claims are given their broadest

reasonable interpretation during prosecution "to facilitate sharpening and clarifying

the claims at the application stage''); Zle~ 893 F.2d at 321 ("during patent

prosecution when claims can be amended, ambiguities should be recognized, scope

and breadth of language explored, and clarification imposed"). And, in situations

where the application of the broadest reasonable interpretation reveals ambiguity in

the claim language, "the applicant may 'amend his claims to obtain protection

commensurate with his actual contribution to the art."' In re Yamamoto, 740 F.2d

1569,1571 (Fed. Cir. 1984) (quoting In re Prater, 415 F.2d 1393, 1405 (CCPA 1969)).

Thus, the broadest reasonable interpretation standard ensures that claims, once fixed

and issued, are as "precise, clear, correct, and unambiguous" as possible. Zlet~ 893

F.2d at 322.

Here, the Board properly rejected Maatita's claimed design as indefinite under

Section 112, second paragraph. Importantly, a design patent -like a utility patent- is

29
a right that rewards inventors with exclusivity and "like any property right, its

boundaries should be clear." See Festo Cotp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535

U.S. 722, 730 (2002); see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 373

(1996) ("It has long been understood that a patent must describe the exact scope of

an invention and its manufacture .... ").

As discussed above, when the Agency issues a well-grounded rejection that

identifies ways "a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear

in describing and defming the claimed invention, and thereafter the applicant fails to

provide a satisfactory response," it "can properly reject the claim as failing to meet the

statutory requirements" of Section 112. Packard, 751 F.3d at 1311. That is precisely

what happened here: the Examiner issued an indefiniteness rejection identifying why

the scope of Maatita's design claim had not been made clear by his drawings showing

only a two-dimensional plan view of his design. Yet Maatita failed to provide any

additional drawings with additional perspective views to clearly define the scope of his

claimed design as applied to a three-dimensional shoe bottomY Instead, Maatita

simply argued, as he does now, that he is entitled to claim his design broadly and his

limited two-dimensional disclosure is good enough. Br. at 22-23 (asserting "that 'the

specific depth and contour' was not a limitation of his claim."); Appx131 (Maatita

13
Even if Maatita were somehow unable to provide additional drawings in the
same application due to, e.g., new matter concerns, he could have flied a new
application with a clear disclosure of his invention.

30
argued (at Appx104) that "just because certain design features can be added to the

claimed design, or that the claimed design can be implemented in different

embodiments, does not mean that the claimed design is indefinite.").

Section 112 requires a level of clarity and informed disclosure that Maatita's

two-dimensional drawings fail to provide. As the Agency's administrative guidance

explains, "if the appearance and shape or configuration of the design for which

protection is sought cannot be determined or understood due to an inadequate visual

disclosure, then the claim, which incorporates the visual disclosure, fails to particularly

point out and distinctly claim the subject matter the inventor(s) regard as their

invention" in violation of 35 U.S.C. 112, ~ 2. See MPEP 1504.04 (I)(A). As the

Examiner demonstrated, an ordinary designer looking at Maatita' s drawings -

showing only a two-dimensional plan view of his design- would not know which

version of a three-dimensional shoe bottom article to apply his design. That is,

Maatita's claimed design could take the form of any of multiple distinct designs (each

with a distinct visual impression) depending on which three-dimensional shoe sole

configuration is imagined. An ordinary designer would not know which distinct

design of many possibilities is claimed and thus, would not clearly understand the

claim's scope. Appx134 (noting the "~Jack of definition in what [Maatita] is actually

claiming does not allow a patent examiner, a court, or the public to sufficiently

understand the design for examination, infringement or notification purposes.").

31
 Contrary to Maatita's argument, the Agency has not rejected his claim as

indefinite under Section 112 to force him to narrow the scope of his protection.

Rather, as the Examiner explained, the indefiniteness rejection seeks to ensure there is

sufficient clarity so the public can discern the precise scope of Maatita's claim from

his disclosure. See Appx134. Without such clarity, the patent system will simply not

work. 14 Competitors, the public and courts will not be able to clearly understand the

boundaries of Maatita's invention which is a fundamental requirement of patent law.

See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (A claim is

unpatentable for indefiniteness if it "fail[s] to inform, with reasonable certainty, those

skilled in the art about the scope of the invention."); Festo Corp., 535 U.S. at 730) (A

patent confers the limited right to exclude and "like any property right, its boundaries

should be clear.").

As the Board found, because Maatita's disclosure forces an ordinary designer to

speculate (or resort to conjecture) it "moves the claimed design from the realm of

being permissibly broad to the realm of being non-enabled and indefinite." Appx7.

14 See Universal Oil Products Co., 322 U.S. at 484 ("But the quid pro quo [for patent
exclusivity] is disclosure of a process or device in sufficient detail to enable one skilled
in the art to practice the invention once the period of the monopoly has expired; and
the same precision of disclosure is likewise essential to warn the industry concerned of
the precise scope of the monopoly asserted.").

32
D. Maatita's Remaining Arguments Fail

1. The Board's non-precedential panel decision in Kaufman does not

bind other Board panels or this Court

Maatita asserts that Ex Parte Kazifman, 2012-003545 (PTAB March 14, 2014), 15

"is directly on point here." Br. at 10-16. But Kaufman, is a non-precedential Board

decision that does not bind any other Board panel, and certainly not this Court. 16

Thus, the Board panel that issued the decision under review in this appeal was not

bound to follow Kaufman.

Further, Maatita never argued Kaufman before the Board. See Appx98-106.

While Maatita raised Kaufman before the examiner and listed it as a related case, he did

not argue it in his Board brief. Id. Thus, it is not surprising that the Board did not

address Kaufmann in its decision, see Br. at 4 (alleging the Board "completely ignored

the Kaufmann decision."), because it was not required to do so. See 37 C.P.R.

41.37(c)(1)(iv) ("[A]ny arguments or authorities not included in the appeal brief will

be refused consideration by the Board[.]"); In re Lovin, 652 F.3d 1349, 1356-57 (Fed.

15
Kaufmann can be found at: https://portal.uspto.gov/pair/PublicPair.
16
As the Board's standard operating procedures (SOPs) explain, "a routine
opinion is not binding authority" on any other Board panel. See SOP 2, rev. 9 at 4.
Available at. https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-
dated-9-22-2014.pdf; see also Fed. Cir. R. 32.1 (d) ("The court will not consider non-
precedential dispositions of another court as binding precedent of that court unless
the rules of that court so provide.").

33
Cir. 2011). And arguments not made before the Board are also waived on appeal to

this Court. See In re Watts, 354 F.3d at 1367 ("[I]t is important that the applicant

challenging a decision not be permitted to raise arguments on appeal that were not

presented to the Board.").

Even if Katifman were considered, it is distinguishable from this case. Although

the rejections and arguments made by Maatita are similar in both cases, Katifman is

distinguishable because, there, the Board found that the Examiner had not established

that the disclosure failed to enable an ordinary designer to make the claimed design.

See Katifman, 2012-003545 at 4 (finding the "Examiner has not established that

Figure 1 fails to adequately depict the ornamental design as claimed so as to enable

one to make and use the claimed invention."). In contrast, here, the Examiner

demonstrated multiple distinct three-dimensional shoe bottom designs that could be

envisioned and/ or imagined by an ordinary designer looking at Maatita's two-

dimensional plan view drawings. And, Maatita conf1rmed before the Board that he

intends his claim to cover any one of the multiple patentably distinct designs that the

Examiner demonstrated. Thus, in this case - unlike Katifman - the Board found the

Examiner had established a lack of enablement. See, e.g., Appx6 (Agreeing with the

Examiner that "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 [drawing] does not adequately reveal

the relative depths and three-dimensionality between the surfaces provided, the

34
Specification does not reveal enough detail to enable the claimed shoe bottom.").

Therefore, Kaufman has no impact on the Board's determination that Maatita's design

application failed to satisfy the enablement and definiteness requirements of Section

112.

2. Each patent is issued on its own facts

Finally, Maatita also argues that "various [other] shoe bottom patents with

single views include features strikingly similar to the features of the Maatita

application" and this somehow should justify a reversal of the Board's decision under

review here. Br. at 14-16. But "it is well settled that the prosecution of one patent

application does not affect the prosecution of an unrelated application." See In re

McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (citing In re Wertheim, 541 F.2d 257,

264 (CCPA 197 6) (holding that "[i]t is immaterial in ex parte prosecution whether the

same or similar claims have been allowed to others.")). See also In re Gyurik, 596 F.2d

1012, 1018 n. 15 (CCPA 1979) ("this court does not consider allowed claims in other

applications or patents"); In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir. 2001) ("The

Board must decide each case on its own merits [and] the PTO's allowance of ... prior

registrations does not bind the Board or this court").

35
 IV. CONCLUSION

Because the Board's decision is supported by substantial evidence, and is in

accordance with the law, this Court should affirm.

Respectfully submitted,

/s I William La Marca ~
October 10, 2017 Nathan K. Kelley
Solicitor

Thomas J. Krause
Deputy Solicitor

William La Marca
Amy J. Nelson
Associate Solicitors

Office of the Solicitor - Mail Stop 8

U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
(571) 272-9035

A ttorneys for the Director of the

United States Patent and Trademark Office

36
 RULE 32(a)(7)(C) CERTIFICATE OF COMPLIANCE

I certify pursuant to Fed. R. App. Proc. 32(a)(7) that the foregoing BRIEF FOR

APPELLEE- DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE

complies with the type-volume limitation required by the Court's rule. The total

number of words in the foregoing brief, excluding table of contents and table of

authorities, is 9,148 words as calculated using the Word software program.

/s/ William LaMarca ~

William La Marca
Office of the Solicitor

37
 CERTIFICATE OF SERVICE

I hereby certify that on October 10, 2017, I electronically filed the foregoing

BRIEF FOR APPELLEE -DIRECTOR O F THE UNITED STATES PATENT

AND TRADEMARK OFFICE, using the Court's CM/ECF filing system. Counsel

for the Appellant was electronically served via e-mail per Fed. R. App. P. 25 and Fed.

Cir. R. 25(a) and 25(b).

/s I William La Marca
William La Marca
Office of the Solicitor