UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

________________

17-2037
________________

IN RE: RON MAATITA

APPLICATION SERIAL NO.: 29/404,677

FILED: OCTOBER 24, 2011
FOR: SHOE BOTTOM
________________

Appeal from the United States Patent and Trademark Office,

Patent Trial and Appeal Board
Appeal No. 2015-005829
________________

OPENING BRIEF OF APPELLANT

________________

STEVEN E. SHAPIRO JOSEPH G. SWAN

1223 Wilshire Blvd. #461 1334 Parkview Avenue
Santa Monica, CA 90403 Suite 100
Tel: (310) 428-4776 Manhattan Beach, CA 90266
Tel: (310) 372-8624

Counsel for Appellant Ron Maatita

August 28, 2017

 CERTIFICATE OF INTEREST
Counsel for Appellant Ron Maatita certifies the following:
1. The full name of every party represented by me is:
Ron Maatita.
2. The name of the real party in interest represented by me is:
Dynasty Footwear, Ltd.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the parties represented by me are:
None.
4. The names of all law firms and the partners and associates that have
appeared for the party in the proceedings below or are expected to appear for the
party in this court and who are not already listed on the docket for the current case:
Steven E. Shapiro and Joseph G. Swan

Dated: August 28, 2017 /s/ Steven E. Shapiro

Steven E. Shapiro
Counsel for Appellant

i
 TABLE OF CONTENTS

Page
CERTIFICATE OF INTEREST .................................................................. i

TABLE OF AUTHORITIES ...................................................................... iii

STATEMENT OF RELATED CASES ...................................................... v

JURISDICTIONAL STATEMENT ............................................................ 1

STATEMENT OF THE ISSUES ................................................................ 1

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

SUMMARY OF ARGUMENT .................................................................. 5

STANDARD OF REVIEW ........................................................................ 7

ARGUMENT .............................................................................................. 8

I. THE DECISION BELOW IS BASED ON THE INCORRECT

PREMISE THAT A SINGLE FIGURE CANNOT AS A
MATTER OF LAW DEFINE ADEQUATELY A DESIGN
FOR A THREE-DIMENSIONAL OBJECT... 8
.
II. THE EXAMINER FAILED TO ESTABLISH THAT
MAATITAS PATENT APPLICATION WAS NON-ENABLING 16

III. MAATITAS PATENT CLAIM WAS NOT INDEFINITE ........... 21

CONCLUSION ........................................................................................... 24

ADDENDUM

CERTIFICATE OF SERVICE

CERTIFICATE OF COMPLIANCE

ii
 TABLE OF AUTHORITIES
CASES PAGES

American Beverage Corp. v. Diageo North America,

936 F. Supp. 2d 555 (W.D.Pa. 2013) .................................... 21

Arminak & Assocs. v. Saint-Gobain Calmar, Inc.,

501 F.3d 1314 (Fed. Cir. 2007) ............................................. 22

Door-Master Corp. v. Yorktowne, Inc.,

256 F.3d 1308 (Fed. Cir. 2001) ............................................. 10

Durling v. Spectrum Furniture Co.,

101 F.3d 100 (Fed. Cir. 1996) ............................................... 22

Ex Parte Kaufman, Appeal 2012-003545, Serial No. 29/247,378

(PTAB March 14, 2014) ........................................................ 3, 4, 10-13,
23

In re Angstadt, 537 F. 2d 498 (CCPA 1976) .................................... 9-10

In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) ............... 7

In re Berger, 279 F. 3d 975 (Fed. Cir. 2002) ................................... 7-8

In re Moore, 439 F.2d 1232 (CCPA 1971) ...................................... 9, 16

In re Morsa, 713 F. 3d 104 (Fed. Cir. 2013) .................................... 7

In re NuVasive, Inc., 842 F. 3d 1376 (Fed. Cir. 2016) ..................... 7

In re Zahn, 617 F.2d 261 (CCPA 1980) ........................................... 9

KeyStone Retaining Wall Systems v. Westrock, Inc.,

997 F.2d 1444 (Fed. Cir. 1993) .............................................. 10

Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870 (Fed. Cir. 1993) ... 8

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) 21, 22

Sport Dimension, Inc. v. Coleman Co.,

iii
 820 F. 3d 1316 (Fed. Cir. 2016) .............................................. 22

STATUTES AND REGULATIONS

28 U.S.C. 1295(a)(4)(A) ................................................................. 1

35 U.S.C. 112 (Pre-AIA) ................................................................ passim

35 U.S.C. 112, first paragraph (Pre-AIA) ...................................... 1, 5, 6, 17

35 U.S.C. 112, second paragraph (Pre-AIA) .................................. 1, 2, 5, 7,

11, 16, 21

35 U.S.C. 171 .................................................................................. 5, 7, 9, 20

35 U.S.C. 329 ................................................................................. 1

OTHER MATERIALS

U.S. Patent No. D402,451 ................................................................. 14

U.S. Patent No. D572,885 ................................................................. 15

U.S. Patent No. D573,335 ................................................................. 15

U.S. Patent No. D789,568 ................................................................. 13

iv
 STATEMENT OF RELATED CASES

Pursuant to Federal Circuit Rule 47.5, counsel for Appellant Ron Maatita

states that no appeal from the Patent Trial and Appeal Board proceedings at issue

in this appeal was previously before this Court or any other appellate court. There

are no cases known to counsel that will directly affect or be directly affected by

this Courts decision in this appeal.

v
 JURISDICTIONAL STATEMENT

This is an appeal of a final written decision of the Patent Trial and Appeal

Board (the PTAB) of the United States Patent and Trademark Office, which

affirmed a rejection of a design patent claim. This Court has jurisdiction over the

appeal under 35 U.S.C. 329 and 28 U.S.C. 1295(a)(4)(A).

STATEMENT OF THE ISSUES

1. Is a design patent application with a single view necessarily inadequate

where the claim encompasses a three-dimensional object?

2. Did the Examiner establish that Maatitas patent application does not

comply with 35 U.S.C. 112, first paragraph (pre-AIA) because it ts non-

enabling?

3. Does Maatitas patent claim fail to comply with 35 U.S.C. 112, second

paragraph (pre-AIA) because it is indefinite?

1
 STATEMENT OF THE CASE

On October 24, 2011, Appellant Ron Maatita (Maatita) filed his Shoe

Bottom design patent application (the Maatita Application). [Appx34.] The

Maatita Application contains a single claim with two figures. [Appx28-30.] Fig. 1

(Appx29) is reproduced below:

On February 4, 2014, the Examiner issued a first office action. [Appx38.]

The Examiner objected to the specification on the ground that the two

embodiments were identical and only the unclaimed context/environment of the

two figures was different. [Appx39.] The Examiner also rejected the patent

application, asserting it failed to comply with 35 U.S.C. 112, first and second

paragraphs (pre-AIA). [Appx39.] The Examiner contended: The claim is

indefinite because the scope of protection sought is not disclosed in the

2
specification and drawings. The claim is not enabled because the disclosed [sic] is

not understandable to a designer of ordinary skill in the art without resorting to

conjecture. [Appx39-40.] The Examiner further explained: The drawing is

subject to multiple interpretations as it could be understood to be configured in a

number of ways . [Appx40.]

On May 1, 2014, Maatita responded to the office action. [Appx52.]

Maatita amended the specification to clarify that the two figures represented the

same embodiment in different environmental settings. [Appx53.] Maatita also

argued against the Section 112 rejection. [Appx54-55.] In particular, Maatita

brought to the Examiners attention an earlier decision of the Patent Trial and

Appeals Board (PTAB) wherein the PTAB had reversed enablement and

indefiniteness rejections based on similar facts. [Appx54.] That decision (Ex Parte

Kaufman, Appeal 2012-003545, Serial No. 29/247,378 (PTAB March 14, 2014))

concerned a design patent application for a shoe sole that comprised a single

view, a plan view.1 Maatita further argued:

1
The addendum to this brief includes the Kaufman decision. The decision is also
available in a publicly accessible database maintained at the US Patent and
Trademark Office. In particular, the decision is available at
https://portal.uspto.gov/pair/PublicPair and can be obtained by inputting the
serial number.
3
 [T]here is no specific allegation that one of ordinary skill would

not be able to produce the claimed design, i.e., that such a person

would be incapable of selecting an appropriate depth or contour that

would result in the illustrated combination of design features. To the

contrary, the Office Action even articulates several different ways in

which the present design could be created, most simply, with the

shoe sole and all the illustrated design features being entirely flat.

[Appx55.]

On May 13, 2014, the Examiner issued a final rejection. [Appx63.] The

Examiner made no attempt to distinguish the Kaufman decision. Rather, the

Examiner concluded: A shoe bottom is inherently a three-dimensional object,

and as such, when realized, it would not exist in only a single viewpoint (a plan

view) used for a single figure drawing disclosure. [Appx70.]

On August 11, 2014, Maatita appealed the final rejection to the PTAB.

[Appx83.] After the appeal was briefed, the PTAB rendered its decision on March

29, 2017, affirming the rejection. [Appx2-8.] In doing so, the PTAB completely

ignored the Kaufman decision. [See Appx87 and Appx97.] The PTAB explained:

The curvilinear shapes of the different surfaces of the claimed

shoe bottom design cannot be determined with any specificity,

4
 including whether each is convex or concave, and because the single

view does not adequately reveal the relative depths and three

dimensionality between the surfaces provided, the Specification does

not reveal enough detail to enable the claimed shoe bottom, under

35 U.S.C. 112, first paragraph. The same lack of clarity and detail

also makes the scope of the claim indefinite under 35 U.S.C. 112,

second paragraph. [Appx6-7.]

On May 15, 2017, Maatita timely filed his notice of appeal to this Court.

[Appx166-167.]

SUMMARY OF THE ARGUMENT

The decision below is based upon the premise that a single figure cannot

depict adequately a design applied to a three-dimensional article. This premise is

incorrect and rests on a fundamental misreading of the Patent Statute and a

substantial misinterpretation of relevant precedent. The PTABs ruling imposes

upon Maatita the unfounded obligation to patent a design of an article by

requiring him to include article features that are not part of his design for an

article. See 35 U.S.C. 171(a). In sum, the PTAB and the Examiner below were led

astray by an incorrect presumption that Maatita was patenting a shoe bottom,

not a design for a shoe bottom.

5
 Further, the PTAB was obligated to presume that only the features shown

by Maatita in his drawings constituted his invention. The PTAB had no lawful

basis whatsoever to presume that features not shown were somehow missing

from the drawings.

The PTAB incorrectly analyzed the first paragraph enablement issue first. In

so doing, the PTAB failed completely to analyze Maatitas claim to determine

exactly what subject matter it encompassed. This failure led to the erroneous

decision below. Further, nowhere in the proceedings below did the PTAB or the

Examiner apply the statutory enablement standard. Accordingly, no finding was

made below that any person skilled in the art could not make Maatitas design

for a shoe bottom. To the contrary, it was not disputed that any person skilled in

the art could make Maatitas design for a shoe bottom.

Because the PTAB performed no separate indefiniteness analysis, it made

no mention of any indefiniteness standard. Under any possible standard,

Maatitas claim was not indefinite. There are no errors or inconsistencies in

Maatitas drawings whatsoever. At the same time, no finding was made below as

to the scope of the subject claim and whether a person skilled in the art can

discern that scope with reasonable certainty. Rather, the PTABs reasoning

6
incorrectly presumed that whether the claimed surfaces are flat, concave or

convex was a part of Maatitas claimed design for a shoe bottom.

STANDARD OF REVIEW

This Court reviews the PTABs factual determinations for substantial

evidence and its legal determinations de novo. In re NuVasive, Inc., 842 F. 3d

1376, 1379 (Fed. Cir. 2016). The issues in this matter are issues of law that must

be reviewed de novo. First, the PTAB incorrectly interpreted 35 U.S.C. 171. As a

result, it incorrectly found that a design patent application with a single view is

necessarily inadequate where the claim encompasses a three-dimensional object.

Second, it applied incorrect legal standards in determining whether the Examiner

established that Maatitas patent application does not comply with 35 U.S.C.

112, first and second paragraphs (pre-AIA).

Enablement itself is a question of law based on underlying factual findings.

In re Morsa, 713 F. 3d 104, 109 (Fed. Cir. 2013); In re Antor Media Corp., 689 F.3d

1282, 1287 (Fed. Cir. 2012). However, there are no underlying factual findings

that are disputed here. Compliance with 35 U.S.C. 112, paragraph 2, is a

question of law, which this Court reviews de novo. In re Berger, 279 F. 3d 975,

7
980 (Fed. Cir. 2002); Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 874 (Fed. Cir.

1993).

ARGUMENT

I. THE DECISION BELOW IS BASED ON THE INCORRECT PREMISE THAT A

SINGLE FIGURE CANNOT AS A MATTER OF LAW DEFINE ADEQUATELY A
DESIGN FOR A THREE-DIMENSIONAL OBJECT.

The decision below is based upon the premise that a single figure cannot

depict adequately a design applied to a three-dimensional article. See, Appx6

(the single view does not adequately reveal the relative depths and three

dimensionality between the surfaces provided); Appx70 (A shoe bottom is

inherently a three-dimensional object, and as such, when realized, it would not

exist in only the single viewpoint (a plan view) used for a single figure drawing

disclosure.). This premise is incorrect and is based on a fundamental misreading

of the Patent Statute and a substantial misinterpretation of relevant precedent.

Under the law, Maatita was entitled to define his design in his own terms and the

exact relevant depths and three dimensionality between the surfaces were not

part of his design. Whether the curvilinear shapes of the different surfaces of

the claimed shoe bottom were convex, concave or otherwise was also not part

of his design. As such, Maatita was not required to provide additional views and

thereby arbitrarily limit the scope of his claim.

8
 Eligible subject matter for a design patent is defined as an ornamental

design for an article of manufacture. 35 U.S.C. 171(a). Section 171 refers, not

to the design of an article, but to a design for an article. In re Zahn, 617 F.2d

261, 268 (CCPA 1980) (emphasis in original). The PTABs determination, that

Maatita had to define more exactly the geometric relationship of the surfaces of

his design with additional views, violated this central underpinning of design

patent law. The PTABs ruling imposes upon Maatita the unfounded obligation to

patent a design of an article by requiring him to include article features that are

not part of his design for an article.

Based on the language of the Patent Statute, it is further well settled that

"a design for an article of manufacture may be embodied in less than all of an

article of manufacture.... Id. at 267. Therefore, the PTAB was wrong to require

Maatita to first select one specific article of manufacture and then include

features of that one specific article in his claimed design.

In sum, the PTAB and the Examiner below were led astray by an incorrect

presumption that Maatita was patenting a shoe bottom, not a design for a shoe

bottom. It is basic that the subject matter of a patent claim must be presumed,

in the absence of evidence to the contrary, to be that which the applicant regards

as his invention. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); In re Angstadt,

9
537 F. 2d 498, 501 (CCPA 1976).2 In a design patent application, the metes and

bounds of the claim is defined by the drawings. KeyStone Retaining Wall

Systems v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993); Door-Master Corp.

v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001). Accordingly, the PTAB

was obligated to presume that only the features shown by Maatita in his drawings

constituted his invention. The PTAB had no lawful basis whatsoever to presume

that features not shown were somehow missing from the drawings.

The Kaufman decision is directly on point here.3 In Kaufman, the applicant

applied for a design patent for a shoe sole. The application included a single

figure, which is reproduced below (Kaufman, p. 2).

2
For applications filed prior to September 16, 2012, under the second paragraph
of 35 U.S.C. 112 the claim defines "the subject matter which the applicant
regards as his invention". Emphasis added.
3
The Kaufman decision is attached to this brief.
10
 Just as in the case at bench, the Examiner in Kaufman rejected Kaufmans

application under 35 USC 112, first and second paragraphs, for being indefinite

and non-enabling. Id. at p. 3. The Examiner asserted that the claimed design is

subject to numerous interpretations such as whether the various shapes are in

the same plane, are in a plane perpendicular to the line of sight, or are in different

planes relative to one another. Id. Based on this premise, the Examiner

contended that any number of shoe sole designs might look like [Kaufmans]

Figure, that the claim is indefinite because it is subject to multiple

understandings, and that the claim is not supported by an enabling disclosure

because the intended appearance of the various shapes is neither clear nor

concise, nor exact. Id.

The PTAB reversed the rejection, explaining:

11
 [T]he Examiner here has not properly presumed that what is

depicted in Appellants Figure 1 is that which Appellant regards as

his invention. [Citation omitted]. Instead, the Examiner considers

the entire three-dimensional shoe sole identified in the title as that

which the Applicant regards as his invention, and thus, determines

that conjecture is required in order to determine the portions of the

article that are not illustrated (i.e., whether the various shapes are in

the same plane, or if any of the various shapes are in a plane

particular to the line of sight, or if some of the shapes are in different

planes relative to one another). [Kaufman] has made it clear that

the scope of the claim is broad in that it covers an ornamental design

for only the portion of the shoe sole as viewed from the top

elevation. Id. at p. 4.

In the case at bench, as in Kaufman, the scope of the claim is broad in that

it covers an ornamental design for only the portion of the shoe bottom as viewed

from a single viewpoint. The scope of the claim does not include features that

are not discernable from that single viewpoint. This is true even if, for a single

specific embodiment of the claimed design, such features might be discernable

from other viewpoints. The fact that neither the PTAB nor the Examiner in the

12
case at bench made any attempt whatsoever to distinguish the holding in

Kaufman is telling.4

Not only is the Kaufman decision on point here, but the practices of the

Commissioner of Patents are also consistent with Maatitas position. The patent

record is replete with examples of design patents featuring single views for three-

dimensional articles. To illustrate, US Patent No. D789,568 for a solar light bulb

utilizes a single figure to depict a three-dimensional article.5 The figure is

reproduced below. As can be seen, the filament depicted from a single viewpoint

could have any one of an infinite number of shapes in three-dimensional space.

4
The very same PTAB panel that ruled in the case at bench ruled in Kaufman.
5
US patents are publicly available in a patent database maintained by the United
States Patent and Trademark Office. The US patents referenced herein can be
located by entering the patent number at
http://patft.uspto.gov/netahtml/PTO/srchnum.htm.
13
 Various shoe bottom patents with single views include features strikingly

similar to the features of the Maatita Application. U.S. Patent No. D402,451

includes, for example, diamond-shaped features. It is not possible to tell from the

single figure, reproduced directly below, whether the diamond-shaped features

are concave, convex or otherwise.

14
Similarly, the single figure in U.S. Patent No. D573,335 depicts

rectangular/triangular features:

Likewise, the single figure in U.S. Patent No. D572,885 has hexagonal features:

15
 Under the plain meaning of the Patent Statute and under settled

precedent, Maatita was not obligated to include additional features in his

drawings and thereby unnecessarily narrow his desired scope of protection. As

discussed below, the PTAB and the Examiner never made any attempt

whatsoever to determine the scope of Maatitas claim. This is true even though

the scope of Maatitas claim was fundamental to resolving any purported Section

112 issues. Therefore, the decision below should be reversed.

II. THE EXAMINER FAILED TO ESTABLISH THAT MAATITAS PATENT

APPLICATION WAS NON-ENABLING.

Any Section 112 analysis should begin with the determination of whether

the claims satisfy the requirements of the second paragraph. Moore, 439 F.2d at

1235. This is because the claims must be analyzed first in order to determine

exactly what subject matter they encompass. Id. In the case at bench, however,

16
the PTAB analyzed the first paragraph enablement issue first. In so doing, the

PTAB failed completely to analyze Maatitas claim to determine exactly what

subject matter it encompassed. This failure led to the erroneous decision below.

However, to avoid confusion, Maatita addresses the enablement issue first herein

-- as did the PTAB.

As discussed above, 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. Nevertheless, the PTAB appears to have taken the

position that Maatita needed to include such additional features in his drawings,

i.e., to significantly narrow the scope of protection sought, in order to render his

written description enabling. This position was fundamentally incorrect and the

decision below should be reversed.

The basic test for enablement is set forth in the first paragraph of pre-AIA

35 U.S.C. 112 (applicable here):

The 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 to make and use

the same. [emphasis added].

17
Although it was the Examiners burden to establish that this standard was not met

by Maatita, nowhere in the proceedings below did the PTAB or the Examiner

apply this statutory standard.

Accordingly, no finding was made below that any person skilled in the art

could not make Maatitas design for a shoe bottom, i.e., that such a person would

be incapable of producing at least one embodiment that would result in the

illustrated combination of design features. In fact, the Examiner himself even

articulated several different ways in which the design could be implemented.

[Appx3-4.] Furthermore, as was pointed out by Maatita, the depth or contours

of features on a shoe bottom primarily will be a functional rather than an

aesthetic consideration, e.g., affecting the amount of traction the shoe will have

on different surfaces or in different conditions. [Appx104.] This assertion was

not disputed by either the PTAB or the Examiner. For these reasons, the decision

below must be reversed.

Instead of applying the correct standard for enablement, the PTAB applied

its own, legally unsupported standard. The PTAB ruled: That tread depth in a

shoe design involves no particular creativity and is selected based on functional

considerations does not refute that the claim lacks the exactness of written

description required, particularly when it is unclear whether the claimed surfaces

18
are flat, concave, or convex. [Appx7.] This exactness of written description

standard is contrary to the language of Section 112, i.e., the written description

of the invention need only be in such exact terms as to enable any person

skilled in the art to which it pertains to make and use the same.

In reaching its conclusion below, the PTAB further wrote:

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. It is this requirement

of conjecture, here, that moves the claimed design from the realm of

being permissibly broad to the realm of being non-enabling and

indefinite. [Appx7.]

This reasoning too was completely divorced from the enablement standard

articulated in Section 112. It was not disputed below that a designer of ordinary

skill in the art would have no difficulty selecting appropriate surface depths.

Further, it was not disputed that surface depths are largely functional. In

addition, a supposed standard of moves the claimed design from the realm of

being permissibly broad to the realm of being non-enabling and indefinite is in

reality no standard at all. It provides patent practitioners and the courts no way

19
of determining whether a patent application complies with the Section 112

enablement requirement or not.

The PTABs reliance on dicta from Ex parte Salsbury, 38 U.S.P.Q. 149

(Com'r Pats 1938), was misplaced. The lone issue before the First Assistant

Commissioner in that case was whether it was proper for the examiner to simply

issue a requirement that the applicant must provide more than one drawing.

After considering the matter, the First Assistant Commissioner concluded that

such a requirement was not proper and that the examiner instead must either

reject the claim, based on insufficiency of the disclosure, or withdraw the

requirement for the applicant to submit additional drawing(s). When the

examiner subsequently rejected the claim, the rejection was reversed. Ex parte

Salsbury, 48 U.S.P.Q. 339 (Pat. Off. Bd. of Appeals 1940) (finding that the single

figure of a motor vehicle was adequate). Furthermore, the Salsbury dicta is

completely contrary to the language of 35 U.S.C. 171(a). Section 171(a) defines

design patent subject matter as an ornamental design for an article of

manufacture, not an article of manufacture.

For these reasons, Maatitas invention was fully enabled by his application,

and the decision below should be reversed.

20
III. MAATITAS PATENT CLAIM WAS NOT INDEFINITE.

As mentioned above, the PTABs indefiniteness holding was based on the

same reasoning as it applied to the enablement issue: The same lack of clarity

and detail also makes the scope of the claim indefinite under 35 USC 112, second

paragraph. [Appx6-7.] Accordingly, the indefiniteness rejection should also be

reversed.

Because the PTAB performed no separate indefiniteness analysis, it made

no mention of any indefiniteness standard. The Supreme Court recently stated

that, in the context of a utility patent, "a patent is invalid for indefiniteness if its

claims, read in light of the specification delineating the patent, and the

prosecution history, fail to inform, with reasonable certainty, those skilled in the

art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc.,

134 S. Ct. 2120, 2124 (2014). It is not clear to what extent of this standard will be

applied to design patent cases and Maatita is not aware of a decision by this Court

on the matter. Typically, a design claim is only indefinite if errors and

inconsistencies in the patent drawings are material and of such magnitude that

the overall appearance of the design is unclear." American Beverage Corp. v.

Diageo North America, 936 F. Supp. 2d 555, 589 (W.D.Pa. 2013).

21
 In the case at bench, there are no errors or inconsistencies in Maatitas

drawings whatsoever. At the same time, the Nautilus standard requires a finding

of the scope of the subject claim and a further finding as to whether a person

skilled in the art can discern that scope with reasonable certainty. Neither finding

was made below. Rather, the PTABs reasoning incorrectly presumed that

whether the claimed surfaces are flat, concave or convex was a part of

Maatitas claimed design for a shoe bottom. "A proper interpretation of [a]

claimed design focuses on the visual impression it creates." Durling v. Spectrum

Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996); Arminak & Assocs. v. Saint-

Gobain Calmar, Inc., 501 F.3d 1314, 1320 (Fed. Cir. 2007); Sport Dimension, Inc. v.

Coleman Co., 820 F. 3d 1316, 1321 (Fed. Cir. 2016). Here, the visual impression

created by the Maatita drawings is clear. Maatitas claim is defined by a plan view

of a shoe bottom. Accordingly, a shoe bottom design matching Maatitas plan

view would be within the scope of the Maatitas claim. Whether the features of

the shoe bottom design were convex or concave would be irrelevant. There was

no showing below that a person of skill would not be able to discern the scope of

Maatitas claim with reasonable certainty. This is especially true since, under the

Nautilus standard, the Maatita Application file history would have to be

considered. Maatita stated plainly in his response to the first PTO office action

22
that specific depth and contour was not a limitation of his claim. [See, Appx54-

55.]

The PTAB also incorrectly asserted that Maatitas drawings as a whole,

which include only one view, can be described as being of poor quality if the

topology of the claimed surface cannot be discerned. [Appx7.] The PTAB did not

cite a single precedent that supports this assertion. To the contrary, it ignored

the Kaufman decision, which held the opposite. Maatitas figures clearly and

plainly depict the topological aspects of his design for a shoe bottom that form

part of his claim. Other aspects were not included because they do not form part

of his claim.

For these reasons, the determination below that Maatitas patent claim

was indefinite should be reversed.

23
 CONCLUSION

For the foregoing reasons, this Court should reverse the decision below and

order that the Maatita Application issue as a patent.

Respectfully submitted.

/s/Steven E. Shapiro
Joseph G. Swan Steven E. Shapiro
1334 Parkview Avenue 1223 Wilshire Blvd. #461
Suite 100 Santa Monica, CA 90403
Manhattan Beach, CA 90266 Tel: (310) 428-4776
Tel: (310) 372-8624

Counsel for Appellant Ron Maatita

August 28, 2017

24
ADDENDUM
DECISION
BELOW
 UNITED STATES pATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

29/404,677 10/24/2011 RonMaatita 31045-163 3411

43914 7590 03/29/2017

EXAMINER
JOSEPH SWAN, A PROFESSIONAL CORPORATION
1334 PARKVIEW AVENUE, SUITEIOO NELSON, THORNTON C

MANHATTAN BEACH, CA 90266

ART UNIT PAPER NUMBER

2914

NOTIFICATION DATE DELIVERY MODE

03/29/2017 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
JSWAN@PATENT-TECHLAW.COM

PTOL-90A (Rev. 04/07) Appx1

 UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte RON MAATIT A

Appeal2015-005829
Application 29/404,677
Technology Center 2900

Before JOHN C. KERINS, BIBHU R. MOHANTY, and JILL D. HILL,

Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. 134(a) from the decision of the

Examiner rejecting the sole claim on appeal. The Examiner rejected the
claim under 35 U.S.C. 112, first and second paragraphs. We have
jurisdiction under 35 U.S.C. 6(b ).
We AFFIRM.

Appx2
Appeal2015-005829
Application 29/404,677

The claim is directed to an ornamental shoe bottom. Figure 1, the

only figure in Appellant's Specification, is reproduced below.

FJG, 1'

Figure 1 is a plan view of the shoe bottom.

OPINION
The issue, as argued, boils down to whether Appellant's claim is
permissibly broad or impermissibly non-enabled and indefinite. Ans. 14.
The Examiner contends that the claims are indefinite and non-enabled,
because the disclosed design is not understandable to a designer of ordinary
skill in the art without resorting to conjecture. Final Act. 2. The Examiner
gives four examples of the multiple ways that the claimed design could be
construed (presumably given such conjecture). The four examples are
reproduced below.

2
Appx3
Appeal2015-005829
Application 29/404,677

ln this ~Jtten":pt to <7~-p.;:y

Apl-'wli;m(s d<jf>.ign. tlw
de-S/.t.)r::t7t :fk~S .~}UBS'SGlt !h::.~l
the thre~ eiemerrt:s at lim
e.-dg~ of the sate are r~i~;-f.Ki
and lh'.i~ f~~/fJ OV<ll ~.;j:}~~;r~f!nts
ar.e rect::ssed H..1tlt H:at
cent<R

ln UJi:S att.ern.ot to 23pply

AppsN~llt'S OOS!i;lfl, the
tl-r.r~ tffE.?nJ-ents i:S.t the edge
o.f lti~~ sofe af~~ n~ct~ss-rE~c!
3{1.ti tht.~ ~y~,& O~"Ql ~~lt?m~ltfts
.-sre raised v,dth concave
cent~rs.

- 7:~~c:::~;>j ln this .~U@fi7pt to '-1PP{'l

~~l~~~-
.4;.:~p._q}}a:nrs d$.s~fln
~tlte:-tu~!ir~.tte:f&tns-nt$ a.tt.~
ralsed and ra":es.z.ed with
the CA.9t~te-rs ol the fh,/fJ ov<:J:i
1$/e:.'!}fl.lltS !Javin.g CO!J\'.SCK
appearances.

.A .fe6".S lm.~ginath.. .e
ir~ter,nretation af the clairn
~~ouk'1 hGfVt~ .i~ d&signet
a.pp~)ting i\ope}lanfs design
~$ arl it~?age on a H$t
surfac~ ln a s,;;~1gla. pf.Zh'"frS
~;itr? tt~~ N.3-:..~ ol t.Nt:t bottotn
svrftJc~.

The Examiner's examples above are not numbered and are

accompanied by a narrative explaining how each could be construed by a
designer. Ans. 10--11; Final Act. 9. According to the Examiner, each of the
above designs is patentably distinct, such that the claim covers multiple
patentably distinct designs. !d.
Appellant admits that the claim covers multiple embodiments (Appeal
Br. 9 ("as the Examiner notes, multiple different embodiments can be

3
Appx4
Appeal2015-005829
Application 29/404,677

encompassed within this scope"); id. at 5 (the claim is intended to cover a

variety of relative planes of the shapes on the sole that create the depicted
visual impression)), 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. According to Appellant, "one of
ordinary skill has complete discretion as to what may be included within
those portions and still remain within the claim scope." !d. at 10.
Appellant argues that, even if the Examiner is correct that it is
impossible to discern a specific depth for certain of the presently-illustrated
design features, such a situation would not lead to the conclusion that the
claimed design is not enabled because the depth of the design features is not
a limitation of a claimed design. Appeal Br. 4, 10---11. Appellant also
contends that the depth of the tread, alleged by the Examiner to be unclear,
involves "no particular creativity" and is often selected based on "functional
considerations" such as traction needed for an intended use. Reply Br. 5-6.
The Examiner contends that, given the various depicted embodiments,
the claims are indefinite because an ordinary designer would have to resort
to conjecture. Final Act. 2, 3, 6, 11 (citing Ex parte Salsbury, 38 USPQ 149
(Comm'r. Pat. 1938) (a design patent application "should 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.")).
Under this line of reasoning by Appellant and the Examiner, the
question of whether the claims are permissibly broad or impermissibly non-
enabled and indefinite then turns on whether or when a designer's discretion
amounts to requiring conjecture. Appellant argues that a designer having

4
Appx5
Appeal2015-005829
Application 29/404,677

"some discretion as to how to implement a given claimed design" does not

rise to the level offorcing a designer to resort to conjecture in making the
article. Appeal Br. 9; Reply Br. 10. Appellant contends that the test for
indefiniteness is more along the lines of whether one skilled in the art would
not be capable of producing the claimed design. Appeal Br. 9. Appellant
argues that there is no specific allegation that one of ordinary skill would not
be able to produce the claimed design, i.e., that such a person would be
incapable of selecting an appropriate depth for any of the illustrated design
features. Appeal Br. 3, 5.
35 U.S.C. 112, first paragraph, states 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."
(Emphasis added). As noted by Appellant, MPEP 1504.04 give examples
of when a rejection under 35 U.S.C. 112 would be appropriate. Appeal Br.
4. The examples include: (1) inconsistencies between drawing views; (2)
visual disclosure of the claimed design as originally filed being of poor
quality; or (3) the specification referring to embodiments not shown in the
drawing. !d. Appellant argues that the pending claims present none of these
situations. !d.
Because 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 does not
adequately reveal the relative depths and three dimensionality between the
surfaces provided, the Specification does not reveal enough detail to enable
the claimed shoe bottom, under 35 U.S.C. 112, first paragraph. The same

5
Appx6
Appeal2015-005829
Application 29/404,677

lack of clarity and detail also makes the scope of the claim indefinite under
35 U.S.C. 112, second paragraph.
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. It is this requirement for conjecture, here,
that moves the claimed design from the realm of being permissibly broad to
the realm of being non-enabled and indefinite. Thus, the claim lacks an
enabling description providing the required exact terms that would enable a
designer to make and use the claimed design, as required by 35 U.S. C.
112, first paragraph. That tread depth in shoe design involves "no particular
creativity" and is selected based on "functional considerations" does not
refute that the claim lacks the exactness of written description required,
particularly when it is unclear whether the claimed surfaces are flat,
concave, or convex. The same lack of clarity and detail also makes the
scope of the claim indefinite under 35 U.S.C. 112, second paragraph.
Regarding the examples of circumstances warranting a Section 112 rejection
set forth in MPEP 1504.04, Appellant's drawings as a whole, which
include only one view, can be described as "being of poor quality" if the
topography of the claimed surface cannot be discerned.
We therefore sustain the rejection of the claim as indefinite and
thereby non-enabling.

DECISION
We AFFIRM the Examiner's rejection of the claim under 35 U.S.C.
112, first and second paragraphs for being indefinite and thereby non-

6
Appx7
Appeal2015-005829
Application 29/404,677

enabling.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.P.R. 1.136(a). See 37 C.P.R.
1.136(a)(l )(iv).

AFFIRMED

7
Appx8
KAUFMAN
DECISION
 UNITED STA1ES p A1ENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

29/247,378 06/14/2006 Paul Kaufman 31045-127 7174

43914 7590 03/14/2014

EXAMINER
JOSEPH SWAN, A PROFESSIONAL CORPORATION
1334 PARKVIEW AVENUE, SUI1E100 LEE,SUSANM
MANHATTAN BEACH, CA 90266
ART UNIT PAPER NUMBER

2918

NOTIFICATION DATE DELIVERY MODE

03/14/2014 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
JSWAN @PA1ENT-TECHLA W.COM

PTOL-90A (Rev. 04/07)

 UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte PAUL KAUFMAN

Appeal2012-003545
Application 29/247,378
Technology Center 2900

Before JOHN C. KERINS, BIBHU R. MOHANTY, and JILL D. HILL,

Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal2012-003545
Application 29/247,378

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. 134(a) from the decision of the

Examiner rejecting the sole claim on appeal. The Examiner rejected the
claim under 35 U.S.C. 112, first and second paragraphs, for being
indefinite and thereby non-enabling. We have jurisdiction under 35 U.S.C.
6(b ).
We REVERSE.
The claim is directed to an ornamental shoe sole. Figure 1, the only
figure in Appellant's Specification, is reproduced below.

FIG, 1

Figure 1 is a top plan view of the shoe sole.

OPINION

The Examiner finds that Appellant discloses a single view of a shoe

sole having a perimeter and various shapes therein, and that the claimed
design is subject to numerous interpretations such as whether the various

2
Appeal2012-003545
Application 29/247,378

shapes are in the same plane, are in a plane perpendicular to the line of sight,
or are in different planes relative to one another. Ans. 5. The Examiner
concludes that any number of shoe sole designs might look like Appellant's
Figure, that the claim is indefinite because it is subject to multiple
understandings, and that the claim is not supported by an enabling disclosure
because the intended appearance of the various shapes is neither clear nor
concise, nor exact. !d.

Appellant argues that, even if the Examiner is correct that it is

impossible to discern a specific depth for certain of the presently-illustrated
design features, such a situation would not lead to the conclusion that the
claimed design is not enabled because the depth of the design features is not
a limitation of a claimed design. App. Br. 4, 10-11.

Appellants argue that a rejection based on lack of enablement would

be appropriate if the claim required a design that would not be capable of
being produced by one of ordinary skill in the art, but that "there is no
specific allegation that one of ordinary skill would not be able to produce the
claimed design, i.e., that such a person would be incapable of selecting an
appropriate depth for any of the illustrated design features." App. Br. 4.
Appellant argues that the missing information regarding the relative
planes of the shapes on the sole affects only the breadth of the claim- i.e.,
that the claim is intended to cover a variety of relative planes of the shapes
on the sole that create the depicted visual impression. App. Br. 5.

The Examiner responds that the outstanding rejection is not based

merely on the claimed design having an "unknown depth," but rather is
based on the claims being open to numerous interpretations making it

3
Appeal2012-003545
Application 29/247,378

indefinite and thereby non-enabling. Ans. 5-6. The Examiner again states
that "it is impossible to understand if the sole illustrated by the outermost
perimeter and the various shapes are in the same plane, or if any of the
various shapes are in a plane perpendicular to the line of sight, or if some of
the shapes are in different planes relative to one another." Ans. 6.

MPEP 1504.04(1) provides guidance in stating that "[t]he title does

not define the scope of the claimed design but merely identifies the article in
which it is embodied," and that "[a]pplications filed in which the title (in the
claim) defines an entire article but the drawings and the specification fail to
disclose portions or surfaces of the article that would be visible either during
use or on sale, will not be considered to violate the requirements of the first
and second paragraphs of 35 U.S. C. 112."
It appears that the Examiner here has not properly presumed that what
is depicted in Appellant's Figure 1 is that which Appellant "regards as his
invention." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (subject matter
of claims must be presumed, in absence of evidence to the contrary, to be
that which applicant regards as his invention). Instead, the Examiner
considers the entire three-dimensional shoe sole identified in the title as that
which Appellant regards as the invention, and thus, determines that
conjecture is required in order to determine the configuration of the portions
of the article that are not illustrated (i.e., whether the "various shapes are in
the same plane, or if any of the various shapes are in a plane perpendicular
to the line of sight, or if some of the shapes are in different planes relative to
one another"). Appellant has made clear that the scope of the claim is broad
in that it covers an ornamental design for only the portion of the shoe sole as
viewed from the top elevation. This claim breadth does not render the claim

4
Appeal2012-003545
Application 29/247,378

indefinite. Further, 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. We therefore do not sustain the
rejection of the claim as indefinite and thereby non-enabling.

DECISION

We REVERSE the Examiner's rejection of the claim under 35 U.S.C.

112, first and second paragraphs for being indefinite and thereby non-
enabling.

REVERSED

pgc

5
 CERTIFICATE OF SERVICE
I certify that I served a copy on counsel of record on August 28,
2017 by electronic means (CM/ECF).

/s/Joseph G. Swan
Joseph G. Swan
1334 Parkview Avenue, Suite 100
Manhattan Beach, California 90266
Tel: (310) 372-8624
jswan@patent-techlaw.com
 CERTIFICATE OF COMPLIANCE

I hereby certify that this brief complies with the applicable type-volume

limitations because it contains 4,097 words. This certificate was prepared in

reliance on the word-count function of the word-processing system (Word 2013)

used to prepare this brief.

I further certify that this brief complies with the typeface and type style

requirements of Federal Rule of Appellate Procedure 32(a)(5) and (a)(6) because it

has been prepared in a proportionally spaced typeface using Word 2013 in 14-point

Times New Roman font.

August 28, 2017 /s/ Steven E. Shapiro

Steven E. Shapiro