Another Step Forward: Further Updates on In re Maatita and Design Definiteness

As we wrote about recently here, Examiners continue to rely on the USPTO’s current guidance on the definiteness standard set forth by the Court of Appeals for the Federal Circuit (“Federal Circuit”) in In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018), that ignores the Federal Circuit’s broader instruction—reasonable certainty is all that is required to satisfy the requirements of 35 U.S.C. § 112, not the specific type or quantities of views that the Applicant has chosen to use. 

In the above-referenced article, we wrote about how the Patent Trial and Appeals Board (“Board”) has been chipping away at this limited reading. For example, in Ex parte Chioccioni, the Board reversed a § 112 rejection for a three-dimensional design of an ice cream product that allegedly failed to provide sufficient detail as to the complex “surface undulations” disposed below the claimed container’s top lip and the relative height of the “rosette peaks” extending therefrom. See generally, Ex parte Chioccioni, Appeal 2018-007742, (P.T.A.B. Mar. 24, 2023); see also U.S. D892,428, FIGS. 1 and 6 (annotated below).

In Chioccioni, the Board found that the level of detail required to satisfy the § 112 inquiry is not determined by type or quantity of figures chosen, but as “a function of whether the claimed design . . . is capable of being defined by [those] drawing(s).” Id., at p. 4 (quoting In re Maatita, 900 F.3d at 1378) (internal quotes removed). The Board found that “the question is not whether the parameters of these dimensional details could have been . . . more precisely disclosed in additional drawing views. Rather, the correct question is whether these precise parameters are necessary to sufficiently inform an ordinary observer of the scope of the claim.” Id., at pp. 4 and 5.

In Ex Parte Silva¸ the Board moved even further away from the USTPO’s current guidance on Maatita and again reversed a § 112 rejection for a three-dimensional design of an entire shoe, where a central region of the outsole was only visible from a single bottom plan view, while the remaining portions of the shoe were visible in two or more views. See generally, Ex parte Silva, Appeal 2024-000238 (P.T.A.B. September 27, 2024).

Examiner’s Answer, U.S. 29/753,645, p. 4 (August 24, 2023) (annotating FIG. 7 to show the central region of the outsole that was allegedly indefinite and non-enabling).

In Silva, the Examiner had attempted to distinguish the claim from the facts of Maatita by arguing that Maatita’s reasonable certainty standard is limited to only single-figure designs where three-dimensionality forms no part of the claim whatsoever. See Final Office Action, U.S. 29/753,645, p. 6 (October 17, 2022) (“The facts of [Maatita] relate to a single plan view of an outsole presented without shading or contour lines having any indication of form or depth, as well as no other sides of the design shown, and therefore no indication of three-dimensionality. Its disclosure is entirely two-dimensional in nature with no suggestion of three-dimensionality within the drawing disclosure.”). Relying on the Federal Circuit’s statement that a design for an entire shoe or teapot could not be adequately disclosed in a single plan view, the Examiner in Silva reasoned that “the court is specifically distinguishing designs that are inherently three-dimensional as not capable of being defined by a two-dimensional plan, or planar, view.” Id., p. 7. 

The Board disagreed, finding there to be “no legal basis for two-dimensional design claims being distinct from three-dimensional design claims, much less for applying different disclosure standards for the two,” and that a single design claim must be analyzed as a whole when “consider[ing] whether the overall disclosure provides reasonably certainty of the scope of the claim to one of skill in the art.” Ex parte Silva, p. 6. The Examiner in the application underlying Silva also argued that the Applicant in Maatita was not seeking to cover three-dimensional aspects of the shoe sole claimed in the underlying application See Examiner’s Answer, p. 8. But again, the Board in Silva disagreed, finding that “Maatita’s claim covered multiple possible topographies of the shoe sole” as did Appellant’s claim, which was “not claiming anything other than what is disclosed.” Ex parte Silva, pp. 4 and 5.

The Board has now taken the holding of Maatita even further in Ex parte Le, Appeal 2025-000117 (P.T.A.B. July 23, 2025), noting that the Board “is aware of no legal basis for two-dimensional design claims being distinct from three-dimensional design claims, much less for applying different disclosure standards for the two.” In Le, the Applicant had originally filed a design for a Shoe that included seven total views, as shown below, but ultimately cancelled the bottom view during prosecution in an effort to overcome pending non-enablement and indefiniteness rejections since the Examiner alleged that elements of the outsole were insufficiently enabled and indefinite because the Applicant did not wish to positively incorporate an additional bottom perspective view that had been filed in an Appendix to the application (FIG. A). While the Examiner suggested during prosecution that FIG. A “in the appendix provides the necessary information to allow for a better understanding of the claimed shoe design,” the additional view would have unduly narrowed the scope of the claimed design. Non-final Office action, U.S. 29/760,720, p. 3 (February 24, 2024).

Top, Left, Front Perspective View
Front Elevational View	Rear Elevational View
Right Side Elevational View
Left Side Elevational View
Top Plan View
Bottom Plan View

On appeal of the application underlying Ex parte Le, the Examiner had proffered that “[t]he Federal Circuit made a distinction between designs of two-dimensional and three-dimensional scopes . . . [and] made a point of noting that there are designs for articles that are inherently three-dimensional that could not be adequately disclosed by a two-dimensional illustration . . . .” Examiner’s Answer, U.S. 29/760,720, pp. 6-7 (August 14, 2024). The Board correctly noted that “[w]hile Maatita may allude to the possibility of such a difference [between two- and three-dimensional designs], it does not make such a broad holding. Absent such a legal basis, we decline to separately define—or separately consider the definiteness of—a ‘three-dimensional design claim’ and a ‘two-dimensional design claim.” Ex parte Le, p. 4. 

The Board in Le noted that it “address[es] a single design claim in its entirety, and consider[s] whether the overall disclosure provides reasonable certainty of the scope of the claim to one of skill in the art.” Id. Such a holistic approach to analyzing a claimed design under 35 U.S.C. § 112 follows the Federal Circuit’s approach in Maatita, especially since the Applicant had noted in the application underlying Le that “aspects of the shoe that are not shown form no part of the claimed design.” Appeal Br. U.S. 29/760,720, p. 9 (July 8, 2024).

While none of the Board decisions in Ex parte Chioccioni, Ex parte Silva, or Ex parte Le, change or modify the Federal Circuit’s holding in Maatita, these Board Decisions demonstrate that the rigid framework still being applied by the USPTO related to definiteness and enablement of design patent claims under 35 U.S.C. § 112 does not align with the legal standard, which permits a design Applicant to claim the design in a manner that it sees fit and in a way that “inform[s] with reasonable certainty, those skilled in the art about the scope of the invention.” Maatita, F.3d at 1376 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). 

The authors of this article represented the Appellant in Ex Parte Silva and Ex parte Le.