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Case: 17-2037 Document: 40 Page: 1 Filed: 04/20/2018

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.
____________________________________________________

SUPPLEMENTAL BRIEF FOR APPELLEE – DIRECTOR OF THE


UNITED STATES PATENT AND TRADEMARK OFFICE

Nathan K. Kelley
Solicitor

Thomas W. 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

Attorneys for the Director of the


United States Patent and Trademark Office

April 20, 2018


Case: 17-2037 Document: 40 Page: 2 Filed: 04/20/2018

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).


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TABLE OF CONTENTS

I. ISSUE PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

II. ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

1. Determining whether a design patent is directed


to a single inventive concept with multiple embodiments
versus multiple inventive concepts . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

A. The Rubinfield decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

2. Standard for patentable distinctness in the design patent area . . . . . . . 5

A. When evaluating distinctness between multiple embodiments,


their overall appearance is compared . . . . . . . . . . . . . . . . . . . . . 6

B. The Office applies the obviousness standard when


evaluating distinctness between design embodiments . . . . . . . . 6

C. Examples of indistinct embodiments (no restriction) . . . . . . . . 10

D. Examples of distinct embodiments (restriction applied) . . . . . . 11

3. As applied to Maatita’s design claim . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

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TABLE OF AUTHORITIES
CASES
Borden, In re,
90 F.3d 1570 (Fed. Cir. 1996) ..................................................................................... 7, 8, 9

Durling v. Spectrum Furniture Co., Inc.,


101 F.3d 100 (Fed. Cir. 1996) ............................................................................................. 9

Garbo, In re,
287 F.2d 192 (CCPA 1961) .................................................................................................. 9

Glavas, In re,
230 F.2d 447 (CCPA 1956) .................................................................................................. 9

Gorham Mfg. Co. v. White,


81 U.S. 511 (1871) ............................................................................................................ 3, 9

Harvey, In re,
12 F.3d 1061 (Fed. Cir. 1993) .............................................................................................. 8

Lamb, In re,
286 F.2d 610 (CCPA 1961) .....................................................................................................8

Mann, In re,
861 F.2d 1581 (Fed. Cir. 1988) ............................................................................................ 9

MRC Innovations, Inc. v. Hunter Mfg., LLP,


747 F.3d 1326 (Fed. Cir. 2014) ....................................................................................... 7, 8

Mygatt, Ex parte,
171 O.G. 1257, 1911 C.D. 186 ............................................................................................ 5

Philco Corp. v. Admiral Corp.


199 F. Supp 797 (D. Del. 1961) .......................................................................................... 5

Rosen, In re,
673 F.2d 388 (CCPA 1982) ............................................................................................. 7, 8

Rubinfield, In re,
270 F.2d 391 (CCPA 1959) .............................................................................. 1, 2, 3, 4, 15

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Salsbury, Ex Parte,
38 USPQ 149 (Comm'r Pat., 1938) .................................................................................... 5

Schnell, In re,
46 F.2d 203 (CCPA 1931) ............................................................................................. 2, 13

Titan Tire Corp., v. Case New Holland, Inc.,


566 F.3d 1372 (Fed. Cir. 2009) ............................................................................................ 7

Yardley, In re,
493 F.2d 1389 (CCPA 1977) ................................................................................................ 8

REGULATIONS
35 U.S.C. § 103.......................................................................................................................... 6

35 U.S.C. § 121...................................................................................................................... 5, 7

MPEP 1502 ................................................................................................................................ 3

MPEP 1504.03 ...................................................................................................................... 6, 8

MPEP 1504.05 ...................................................................................................................... 5, 6

MPEP 1504.06 ........................................................................................................................... 1

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I. ISSUE PRESENTED

This Court’s Order of April 10, 2018 (ECF No. 37) instructs the parties to file

supplemental briefs addressing the standards for determining: (1) whether a design

patent is directed to a single inventive concept with multiple embodiments versus

multiple inventive concepts; and (2) what is patentably distinct in the design patent

area. Both questions should be addressed with a particular focus on situations

involving a single drawing. The Director of the United States Patent and Trademark

Office (“Director”) respectfully submits this supplemental brief in response to the

Court’s Order.

II. ARGUMENT

1. Determining whether a design patent is directed to a single inventive


concept with multiple embodiments versus multiple inventive concepts

A. The Rubinfield decision

This Court’s predecessor explained that “when similar designs or embodiments

are presented by an inventor in separate applications, [and] the Patent Office . . . finds

only one inventive concept to be involved, [it] allows a patent on one application and

rejects the others on the ground of double patenting.” In re Rubinfield, 270 F.2d 391,

395 (CCPA 1959); see also MPEP 1504.06 (discussing both statutory and non-statutory

double patenting analysis in designs). In accordance with Rubinfield, the Office

“undertake[s] a similar determination when different embodiments are presented in a

single application.” Id. The Office will permit multiple embodiments of a design
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presented in a single application but “only if they involve a single inventive concept;

and such concept can be protected by a single claim.” Id. at 396. Thus, when

multiple embodiments of a design are presented in a single application, the Office

must determine whether they are patentably distinct (and subject to restriction), or

whether the multiple presented embodiments are indistinct and may stay within a

single application protected by a single design claim.

For the Office to perform such an analysis, illustrations of each embodiment

with the application are necessary. Without separate illustrations of each

embodiment, the Office cannot perform a comparative analysis to determine whether

they are distinct or indistinct. Thus, a single drawing with a two dimensional top-

down plan view does not adequately display multiple embodiments of a design as

applied in the three dimensional configuration context, even though multiple

embodiments could be envisioned from the single drawing. If the design is two

dimensional, for example, limited to a print on a piece of apparel or other flat surface,

then a two dimensional drawing would be sufficient to show a single two dimensional

embodiment.

As discussed further below, it is the visual appearance of a design that drives

the analysis and without illustrations of each embodiment there cannot be a

comparison of their visual appearances. Importantly, designs do not exist in the

abstract but as applied to an article. See In re Schnell, 46 F.2d 203, 208 (CCPA 1931)

(“The invention is not the article and is not the design PER SE, but is the design

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APPLIED.”). As the Agency’s procedural manual explains, a “design is inseparable

from the article to which it is applied and cannot exist alone merely as a scheme of

surface ornamentation.” MPEP 1502 (Definition of Design). That is, the “thing

invented or produced, for which a [design] patent is given, is that which gives a

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

applied, or to which it gives form.” Gorham Mfg. Co. v. White, 81 U.S. 511, 525 (1871).

For example, in Rubinfield, multiple embodiments were illustrated in drawings

(Figs 1-4 and Figs 5-8) and because the visual appearance of each embodiment was

directed to the same inventive concept they were permitted to stay within a single

application protected by a single design claim. As shown in the Rubinfield patent

(Des. 191,031), figures 1-4 show a first embodiment of a Floor Waxer and figures 5-8

show a second embodiment of the same design:

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The court in Rubinfield explained, that “[t]he designs of Figures 1 to 4 and 5 to 8 differ

primarily in that the latter includes certain braces” but the braces could have been

shown with dotted lines “as ‘immaterial’ parts.” See Rubinfield, 270 F.2d at 394. Thus,

even though there were small differences between the two embodiments, they were

found to be directed to a single inventive concept (i.e., indistinct) and the Rubinfield

court permitted them to stay within a single design patent protected by a single claim.

However, the court went on to explain that when individual embodiments are

not separately shown but there is a mere allegation of coverage by a “so-called”

generic claim without sufficient illustration for each embodiment, such a design claim

is indefinite. See Rubinfield, 270 F.2d at 396 (a “so-called generic claim” purported to

cover “the ‘common appearance’ of two modifications” that “is apparently directed to

some broad concept which is not illustrated”. . .“is indefinite and has no proper place

in a design application.”) (emphasis added).

Thus, to the extent an applicant seeks multiple three dimensional embodiments

covered by a single claim, each embodiment must be separately illustrated so a

patentable distinctness and restriction analysis can be performed. When an applicant

provides only a single drawing coupled with an allegation that the single drawing

covers numerous hypothetical embodiments, the Office cannot perform an analysis to

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determine whether the embodiments are patentably distinct.1 Accordingly, an

individual drawing for each embodiment showing its visual impression must first be

provided, and at that point, the Office will perform a comparison to determine

whether to restrict the embodiments and provide the option for them to be filed in

separate applications, or permit multiple embodiments within a single application.

2. Standard for patentable distinctness in the design patent area

When multiple embodiments are presented in an application with a single

design claim, the Office performs an analysis to determine whether the embodiments

are distinct such that a restriction under 35 U.S.C. § 121 is required. Restriction

practice for design applications is explained in the Manual of Patent Examining

Procedure (MPEP). See MPEP 1504.05 (Restriction [in Designs]) (citing Rubinfield).

As discussed below, the distinctness inquiry largely tracks an obviousness analysis.

1
The Office cannot perform a comparison of hypothetical embodiments
without speculating as to their visual impression and it is precisely that type of
speculation that renders such a claim indefinite. Here, there is no dispute that Maatita
seeks a design applied in the three-dimensional configuration context, yet he has only
provided a two-dimensional plan view drawing. Notably, “it has been held that when
contour is an important part of a design, failure to disclose it fully in the drawing will
be fatal to the patent.” See Philco Corp. v. Admiral Corp. 199 F. Supp. 797, 804 (D. Del.
1961) (citing Ex parte Mygatt, 171 O.G. 1257, 1911 C.D. 186 (affirming the examiner’s
finding that a plan-view illustration “does not sufficiently show the configuration of
the article” and that the examiner properly “required a view of the article as seen from
the side, perspective, or elevation” view.)); see also Ex Parte Salsbury, 38 USPQ 149
(Comm’r Pat., 1938) (“With articles which are unsymmetrical and which present
different appearances from different points of view, one figure from a single point,
however well executed, is not sufficient for complete disclosure.”).

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A. When evaluating distinctness between multiple embodiments,


their overall appearance is compared

To determine whether multiple embodiments submitted with an application are

patentably distinct or indistinct, an examiner “must compare the overall appearance of

the multiple designs.” See MPEP 1504.05 (II) (Distinct Inventions) at 1500-53. That

determination requires a comparison of the visual impression created by the

illustrations of each embodiment. Multiple embodiments are not distinct if: “(A) the

multiple designs have overall appearances with basically the same design

characteristics; and (B) the differences between the multiple designs are insufficient to

patentably distinguish one design from the other.” Id. Differences between multiple

embodiments may be considered insufficient to patentably distinguish them when

they are de minimis or obvious to a designer of ordinary skill in the art. Id.

B. The Office applies the obviousness standard when


evaluating distinctness between design embodiments

The Office applies “the obviousness standard under 35 U.S.C. § 103” when

determining whether multiple embodiments are indistinct and “may be retained in a

single application.” Id. (citing MPEP 1504.03 (Nonobviousness for designs)). If

multiple embodiments presented with a design application are simply obvious variants

of each other, then they are indistinct and may remain in the same application. If they

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do not meet the obviousness standard, then they are considered patentably distinct

and a restriction requirement is made.2

For design patents, “‘the ultimate inquiry under section 103 is whether the

claimed design would have been obvious to a designer of ordinary skill who designs

articles of the type involved.’” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d

1326, 1331 (Fed. Cir. 2014) (internal citations omitted). Thus, the central inquiry is

whether the design would have been obvious to “a designer of ordinary skill who

designs articles of the type involved” with a focus on “the visual impression of the

claimed design as a whole.” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (internal

citations omitted).

The obviousness inquiry is performed in two steps for design patents. First, a

primary reference (i.e., a Rosen reference) must be identified. Titan Tire Corp. v.

Case New Holland, Inc., 566 F.3d 1372, 1380-81 (Fed. Cir. 2009). This primary

reference must be “something in existence, the design characteristics of which are

basically the same as the claimed design.” Id. at 1381 (citing In re Rosen, 673 F.2d 388,

2
Importantly, any non-elected embodiments later filed as divisional applications
resulting from a restriction are shielded from double patenting. See 35 U.S.C. § 121
(“A patent issuing on an application with respect to which a requirement for
restriction under this section has been made, or on an application filed as a result of
such a requirement, shall not be used as a reference either in the Patent and
Trademark Office or in the courts against a divisional application or against the
original application or any patent issued on either of them, if the divisional application
is filed before the issuance of the patent on the other application.”).

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391 (CCPA 1982)). In the context of comparing multiple embodiments to determine

whether they are distinct or indistinct, the embodiments are compared to determine

whether they have a visual impression that is “basically the same.” The “basically the

same” test requires consideration of the visual impression created by the design as a

whole and not on selected individual features. MRC Innovations, 747 F.3d at 1331;

Borden, 90 F.3d at 1574.3 Stated another way, “[t]he basic consideration in

determining the patentability of designs over prior art is similarity of appearance.” In

re Yardley, 493 F.2d 1389, 1392-93 (CCPA 1977). Thus, “in order to support a holding

of obviousness, a primary reference must be more than a design concept; it must have

an appearance substantially the same as the claimed design.” See MPEP 1504.03 (II)

(Prima Facie Obviousness) (citing In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993)). Here,

that means for one embodiment to qualify as merely an obvious variant of another

embodiment of a claimed design, it would first need to have “an appearance [that] is

substantially the same.” Id.

Once a primary reference is identified (or it is established that one embodiment

has a visual impression that is “basically the same” as another embodiment), other

references “may be used to modify it to create a design that has the same overall

3
Minor differences between the claimed design and a primary reference may not
defeat a claim of obviousness because, as this Court has recognized, “if the designs
were identical, no obviousness analysis would be required.” MRC Innovations, 747
F.3d at 1332-33 (collecting cases); see also In re Lamb, 286 F.2d 610, 611 (CCPA 1961).

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visual appearance.” Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir.

1996). The teachings of these secondary references may be combined only when “the

designs are ‘so related that the appearance of certain ornamental features in one would

suggest the application of those features to the other.’” Borden, 90 F.3d at 1574-75

(quoting In re Glavas, 230 F.2d 447, 450 (CCPA 1956)).

Finally, a design claim is limited to what is shown in the application drawings.

See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (“Design patents have almost no

scope. The claim at bar, as in all design cases, is limited to what is shown in the

application drawings.”). Although “a design may embody functional features,” in

order “to attain this legal status under these circumstances, the design must have an

unobvious appearance distinct from that dictated solely by functional considerations.”

In re Garbo, 287 F.2d 192, 193-94 (CCPA 1961). This is because “[t]he only use

possible for an ornamental design is its embodiment, exhibition, and observation.”

Mann, 861 F.2d at 1581. That is, “the thing invented or produced, for which a

[design] patent is given, is that which gives a peculiar or distinctive appearance to the

manufacture, or article to which it may be applied, or to which it gives form.” Gorham

Mfg. Co., 81 U.S. at 525. Thus, “the use to which an article is to be put has no bearing

on its patentability as a design” and therefore no impact on the obviousness analysis.

See Glavas, 230 F.2d at 450.

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C. Examples of indistinct embodiments (no restriction applied)

To help visualize how multiple embodiments presented in a single application

appear, some examples are provided. As shown below in Design Patent No. 471,696,

Figs. 1 and 7 illustrate two embodiments of the same shoe sole design. While there

are small differences shown in the illustrations of the two embodiments, the

perspective view drawings show that the three dimensional configuration is basically

the same and therefore they were found to be indistinct (or directed to the same

inventive concept) and permitted to stay within a single patent and protected by a

single claim:

Similarly, Design Patent No. 434,548 (below) shows Figs. 1-3 (a first

embodiment) and Figs. 4-6 (a second embodiment) of the same shoe design. Again,

perspective view drawings of the various embodiments were provided and reflected

that, although small differences exist, the visual impression of the two embodiments

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were basically the same and found to be indistinct and therefore permitted to stay

within the same design patent protected by a single design claim:

D. Examples of distinct embodiments (restriction applied)

In contrast, Design Patent Nos. 518,283, 527,174 and 528,761 (on the

following page) each show separate embodiments of a shoe design that were each

found to be distinct and therefore a restriction was applied. Each non-elected

embodiment was then filed separately and issued as a separate patent. Notably, the

drawing for each embodiment reflects the same background environment via dotted

lines (i.e., the background is the same shoe upper), but the solid lines reflect a unique

design for each embodiment that have a distinct visual impression. Accordingly, even

though the overall shoe is the same, the visual impression of the claimed design is

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distinct for each embodiment and therefore a restriction was applied and the

embodiments were filed separately and issued as separate design patents.

Similarly, Design Patent Nos. 499,871 and 513,861 show two embodiments of

a shoe design found to provide distinct visual impressions and therefore restricted

into separate applications. A separate design patent issued for each embodiment.

3. As applied to Maatita’s design claim

Maatita’s design claim on appeal is for “an ornamental design for a Shoe

Bottom as shown and described” in the two-dimensional plan view shown in Figure 1

(Appx3; Appx29) (reproduced below):

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Maatita did not present any drawings or views other than a single two dimensional

top-down plan view. Yet Maatita asserts that his design is to be applied to shoe soles

in the three dimensional configuration context. That means, there are many potential

three dimensional design embodiments that can be imagined from the two

dimensional plan-view drawing Maatita provided. As the Examiner exemplified by

illustrating some hypotheticals, Maatita’s design can be envisioned in numerous ways:

See PTO Br. at 5-7 (citing Appx4; Appx70-71; Appx121-122). Notably, Maatita has

confirmed that he intends his design to be applied in the three dimensional

configuration4 context. As the examiner pointed out in his answer, Maatita has not

4
Importantly, “[w]here a design is for the form or configuration or involves the
relative proportions of parts of an article of manufacture, said article of manufacture
must necessarily be disclosed in the application.” Schnell, 46 F.2d at 206-07.

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limited his design to “an impression, print, picture or other two dimensional

ornament applied to the surface of an article of manufacture” but he has confirmed

that he intends his design to cover three dimensional configuration-type designs.5

Appx136. Thus, since Maatita seeks to have an array of configuration-type design

embodiments covered by his single design claim, they must be assessed for whether

they are distinct or indistinct. And, critically, that assessment depends on comparing

the visual impression conveyed to an ordinary observer by the three-dimensional

configuration shoe sole design. Even though different shoe soles may look similar

when viewing them in two dimensions that does not mean the three dimensional

configuration designs of those shoe soles do not convey distinct visual impressions.

If distinct, a restriction will be applied. If an embodiment is indistinct, then it would

be permitted to stay within the same applications and protected by a single claim. But

at a minimum Maatita must present illustrations for each embodiment that he seeks to

include in the application so that a comparison/distinctness analysis can be

performed. By simply providing a single two dimensional plan-view drawing and

asserting that it is a broad generic claim that covers “all” embodiments without any

5
As the examiner noted, Maatita “asserts that any of the four hypothetical
embodiments created by the examiner using Appellant’s single plan view, would be
within the scope of the claimed design” and “in three of the four hypothetical
embodiments, the designs created were configuration-type designs wherein the
elements of the claimed design have significant form being situated in different
planes” which “[o]ne would not describe . . . as an impression, picture, or print.” See
Appx136.

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illustration of what those individual embodiments are, Maatita has not provided a

definite claim that can be examined or evaluated for purposes of determining whether

multiple embodiments may stay within a single application. See Rubinfield, 270 F.2d at

396 (a “so-called generic claim” that is alleged to cover “the ‘common appearance’ of

two modifications” and “is apparently directed to some broad concept which is not

illustrated” would be indefinite and has no proper place in a design application.”)

(emphasis added).

Respectfully submitted,
Date: April 20, 2018

/s/ William La Marca


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

Attorneys for the Director of the


United States Patent and Trademark Office

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CERTIFICATE OF SERVICE

I hereby certify that on April 20, 2018, I electronically filed the foregoing

SUPPLEMENTAL BRIEF FOR APPELLEE - DIRECTOR OF THE UNITED STATES PATENT

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

Appellant was electronically served by and through the Court’s CM/ECF filing

system pursuant to Fed. R. App. P. 25(c) and Fed. Cir. R. 25(e).

/s/William La Marca
Office of the Solicitor
U.S. PATENT AND TRADEMARK OFFICE
Mail Stop 8, P.O. Box 1450
Alexandria, Virginia 22313-1450
Tel: (571) 272-9035