The Federal Circuit recently considered the sufficiency of a design patent application having only a single 2-dimensional drawing of a possibly 3-dimensional article. In re Maatita relates to a claimed show sole design where the contours of certain claimed elements in the sole are undisclosed. The Patent Office asserted that the claim scope was unclear and thus the application failed the written description and enablement requirements. The applicant argued that the features in the third dimension were simply unclaimed. The applicant relied on a prior, non-binding, case by the PTAB, Ex Parte Kaufman, Appeal 2012-003545, Serial No. 29/247,378 (P.T.A.B. Mar. 14, 2014) that reversed enablement and indefinite rejections of a design patent application that, like Maatita’s application, disclosed the design for a shoe sole in a two-dimensional, plan-view figure.
The Federal Circuit made clear the correct lens through which definiteness is viewed in the design patent context, noting that
... we believe that in the design patent context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer. Thus, a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.
From this, the court reached the conclusion that a single 2-D disclosure, even if of a design that could be a 3-D article, is sufficient. Features of the undisclosed third dimension are simply unclaimed subject matter. See MPEP § 1504.04. The court noted that since the third dimension is unclaimed, that means that the design was not limited to any particular features in that dimension. Therefore, while the claim might be broad, it was not indefinite:
We do not, of course, suggest that an applicant for a design of a shoe bottom could not choose to disclose his design from a three-dimensional perspective, as many do. If so, that would be the scope of the claimed design for purposes of judging obviousness, indefiniteness, or infringement. That is not what Maatita has done here.
So, if you want to broaden the scope of your design patent coverage, consider filing a 2D view. But, make sure it is sufficient to communicate the claimed design.