  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               IN RE: RON MAATITA,
                       Appellant
                ______________________

                       2017-2037
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 29/404,677.
                  ______________________

                Decided: August 20, 2018
                 ______________________

   STEVEN E. SHAPIRO, Kim Shapiro Park and Lee, Los
Angeles, CA, argued for appellant. Also represented by
JOSEPH GERALD SWAN, Joseph G. Swan, a Professional
Corporation, Manhattan Beach, CA.

    WILLIAM LAMARCA, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Andrei Iancu. Also represented by
THOMAS W. KRAUSE, AMY J. NELSON.
                ______________________

       Before DYK, REYNA, and STOLL, Circuit Judges.
DYK, Circuit Judge.
    This is an appeal from a rejection in initial examina-
tion of appellant Ron Maatita’s design patent application
covering the design of an athletic shoe bottom. The exam-
2                                            IN RE: MAATITA




iner rejected the application’s single claim as non-enabled
and indefinite under 35 U.S.C. § 112 because it used a
single, two-dimensional plan-view drawing to disclose a
shoe bottom design and thereby left the design open to
multiple interpretations regarding the depth and contour
of the claimed elements. The Patent Trial and Appeal
Board (“Board”) affirmed the examiner’s rejection. Be-
cause we find the Board misapplied § 112 in the design
patent context, we reverse.
                      BACKGROUND
    On October 24, 2011, Appellant Ron Maatita (“Maati-
ta”) filed design patent application, No. 29/404,677 cover-
ing the design of an athletic shoe bottom. The application
contained a single claim reciting “[t]he ornamental design
for a Shoe Bottom as shown and described” and two
figures showing a plan view of the claimed shoe bottom
design. J.A. 28. Figure 1 is reproduced below:




J.A. 29. As is customary, the solid lines of Figure 1 show
the claimed design, whereas the broken lines show struc-
ture that is not part of the claimed design—in this case,
the shoe bottom environment in which the design is
embodied. In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967);
MPEP 1503.02 (III). Figure 2, which the ’677 application
IN RE: MAATITA                                            3



described as a “second representative embodiment,”
differs from Figure 1 only in unclaimed design elements
near the arch of the foot. J.A. 28.
     On February 4, 2014, the examiner issued a first of-
fice action objecting to the application on the ground that
the two embodiments were identical and only the un-
claimed surrounding environment of the two figures was
different. The examiner also rejected Maatita’s design
claim as failing to satisfy the enablement and definiteness
requirements of 35 U.S.C. § 112, first and second para-
graphs. 1 In the examiner’s view, the application’s use of a
single, two-dimensional plan view to disclose a three-
dimensional shoe bottom design left the design open to
multiple interpretations regarding the depth and contour
of the claimed elements, therefore rendering the claim not
enabled and indefinite.
    On May 1, 2014, Maatita responded to the office
action, amending the specification to clarify that Figure 1
and Figure 2 represented the same embodiment in differ-
ent environmental settings. Maatita also argued that
there was no enablement problem because “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 or
contour that would result in the illustrated combination of
design features.” J.A. 55. Moreover, in Maatita’s view,



         The America Invents Act (“AIA”) reformatted the
   1

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 AIA. The AIA
did not make any substantive change to § 112; therefore,
the analysis is identical under both versions.
4                                            IN RE: MAATITA




“[o]mission of certain design elements that potentially
could have been included merely affects the breadth of the
claimed design.” Id. Thus, the single claim could cover
multiple appropriate depth and contour choices without
rendering the claim indefinite. Maatita also brought to
the Examiner’s attention Ex Parte Kaufman, Appeal
2012-003545, Serial No. 29/247,378 (P.T.A.B. Mar. 14,
2014), 2 an earlier Board decision reversing 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.
     On May 13, 2014, the examiner issued a final rejec-
tion, again rejecting the claim as not enabled and indefi-
nite. The examiner prepared and included four three-
dimensional renderings showing different implementa-
tions of Maatita’s two-dimensional plan view. These
different implementations are shown below, as repro-
duced in the final written decision:




    2    The Kaufman decision can be obtained by input-
ting its application serial number to the publicly accessi-
ble     database     maintained     by    the   PTO     at
https://portal.uspto.gov/pair/PublicPair.
    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, 4.
https://www.uspto.gov/sites/default/files/documents/sop2-
revision-9-dated-9-22-2014.pdf.
IN RE: MAATITA            5




J.A. 4; accord J.A. 71.
6                                            IN RE: MAATITA




    In the examiner’s view, these four renderings were
patentably distinct and therefore could not be covered by
a single claim. Thus, Maatita’s single claim was indefinite
and not enabled, “as one would not know which of the
many possible distinct embodiments of the claim is appli-
cant’s in order to make and use applicant’s design.” J.A.
72. Specifically, the examiner noted that the claim was
not enabled “because the disclosed design is not under-
standable to a designer of ordinary skill in the art without
resorting to conjecture.” J.A. 64. Similarly, the examiner
found the claim indefinite “because the scope of protection
sought is not disclosed in the specification or understand-
able as depicted in the drawings.” Id.
    On August 11, 2014, Maatita appealed the final
rejection to the Board. On March 29, 2017, the Board
issued a final written decision affirming the examiner’s
rejection. The Board concluded that “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 para-
graph,” and that “[t]he same lack of clarity and detail also
makes the scope of the claim indefinite under 35 U.S.C.
§ 112, second paragraph.” J.A. 6–7.
    Maatita timely appealed. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
    As with utility patents, the written description of a
design patent must meet certain statutory requirements
regarding enablement and definiteness. See 35 U.S.C.
§ 171. The pre-AIA version of 35 U.S.C. § 112, first para-
graph, concerns the requirement that a patent be enabled
by its written description. It states, in relevant part:
IN RE: MAATITA                                           7



   The specification shall contain a written descrip-
   tion of the invention, and of the manner and pro-
   cess 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.
35 U.S.C. § 112. The second paragraph of § 112 addresses
the definiteness requirement. It provides that:
   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.
Id. Because design patent claims are limited to what is
shown in the application drawings, see In re Mann, 861
F.2d 1581, 1582 (Fed. Cir. 1988), there is often little
difference in the design patent context between the con-
cepts of definiteness (whether the scope of the claim is
clear with reasonable certainty) and enablement (whether
the specification sufficiently describes the design to
enable an average designer to make the design), see Ex
Parte Asano, 201 U.S.P.Q. 315, 317 (B.P.A.I. 1978) (ex-
plaining that issues related to enablement were “general-
ly the same as” issues concerning definiteness in the
design patent context); MPEP 1504.04 (I)(A). In this case,
in particular, we think that the indefiniteness and ena-
blement inquiries are similar and can be assessed togeth-
er.
    A visual disclosure may be inadequate—and its asso-
ciated claim indefinite—if it includes multiple, internally
inconsistent drawings. See Times Three Clothier, LLC v.
Spanx, Inc., Case Nos. 13-cv-2157, 13-cv-7260, 2014 WL
1688130, at *7–9 (S.D.N.Y. 2014) (holding design patents
directed to ornamental designs for an undergarment
invalid for indefiniteness because the drawings were
8                                             IN RE: MAATITA




inconsistent as to material aspects of the claimed design).
Errors and inconsistencies between drawings do not merit
a § 112 rejection, however, if they “do not preclude the
overall understanding of the drawing as a whole.” Asano,
201 U.S.P.Q. at 317; see also Antonious v. Spalding &
Evenflo Cos., 217 F.3d 849, 1999 WL 777450, at *8 (Fed.
Cir. 1999) (unpublished) (reversing summary judgment of
indefiniteness when alleged inconsistencies between
drawings could have been based on perspective and were
not “sufficient to preclude a person from gaining an
overall understanding of the total substance of the de-
signs”); Deckers Outdoor Corp. v. Romeo & Juliette, Inc.,
Case No. 2:15-cv-02812, 2016 WL 7017219, at *3–5 (C.D.
Cal. Dec. 1, 2016) (holding that two patents covering a
boot design met § 112’s definiteness requirement, despite
the fact that some figures showed a small “v-shaped
notch” on the inward-facing side of the boot and other
figures arguably did not).
    It is also possible for a disclosure to be inadequate
when there are inconsistencies between the visual disclo-
sure and the claim language. See Eclectic Prods., Inc. v.
Painters Prod., Inc., No. 6:13–CV–02181, 2015 WL
930045, at *3 (D. Or. Mar. 2, 2015) (holding a design
patent claim invalid for indefiniteness when the verbal
description of the claimed design stated it was addressed
to an applicator cap on a tube dispenser used for spack-
ling paste but the drawings did not show any cap, just the
tube dispenser). Ultimately, a patent is indefinite for
§ 112 purposes whenever its claim, read in light of the
visual disclosure (whether it be a single drawing or mul-
tiple drawings), “fail[s] to inform, with reasonable certain-
ty, those skilled in the art about the scope of the
invention.” See Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2124 (2014).
   Here, we are not dealing with inconsistencies in the
drawings, or inconsistencies between the drawings and
IN RE: MAATITA                                            9



the verbal description, but rather with a single represen-
tation of a design that is alleged to be of uncertain scope.
The question is whether the disclosure sufficiently de-
scribes the design. In Nautilus, which dealt with indefi-
niteness in the utility patent context, the Supreme Court
emphasized that § 112 ¶ 2 “require[s] that a patent’s
claims, viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of
the invention with reasonable certainty.” 134 S. Ct at
2129. The Court further explained that § 112’s definite-
ness requirement guards against “zone[s] of uncertainty”
within the patent system, “which enterprise and experi-
mentation may enter only at the risk of infringement
claims.” Id. (quoting United Carbon Co. v. Binney &
Smith Co., 317 U.S. 228, 236 (1942)). The purpose of
§ 112’s definiteness requirement, then, is to ensure that
the disclosure is clear enough to give potential competi-
tors (who are skilled in the art) notice of what design is
claimed—and therefore what would infringe. See Carnegie
Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437 (1902)
(stating that “any description which is sufficient
to . . . serve as a warning to others of what the patent
claims as a monopoly, is sufficiently definite to sustain
the patent”).
    With this purpose in mind, it is clear that the stand-
ard for indefiniteness is connected to the standard for
infringement. In the design patent context, one skilled in
the art would look to the perspective of the ordinary
observer since that is the perspective from which in-
fringement is judged. A design patent is infringed if “an
ordinary observer, familiar with the prior art, would be
deceived into thinking that the accused design was the
same as the patented design.” Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc);
see also Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S.
511, 528 (1871) (holding that design patent infringement
10                                            IN RE: MAATITA




is viewed from “the eye of an ordinary observer, giving
such attention as a purchaser usually gives”). Given that
the purpose of indefiniteness is to give notice of what
would infringe, 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 rea-
sonable certainty based on the claim and visual disclo-
sure.
    Similar logic motivated our decision in International
Seaway Trading Corp. v. Walgreens Corp., which held
that the ordinary observer test is the sole test for design
patent anticipation. 589 F.3d 1233, 1237–41 (Fed. Cir.
2009). In so deciding, we cited Supreme Court and Feder-
al Circuit precedent holding that the same tests must be
applied to infringement and anticipation. See Peters v.
Active Mfg. Co., 129 U.S. 530, 537 (1889) (“That which
infringes, if later, would anticipate, if earlier.”); Bern-
hardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d
1371, 1378 (Fed. Cir. 2004), abrogated on other grounds
by Egyptian Goddess, 543 F.3d at 671, 678 ; Door–Master
Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed. Cir.
2001).
    So long as the scope of the invention is clear with rea-
sonable certainty to an ordinary observer, a design patent
can disclose multiple embodiments within its single claim
and can use multiple drawings to do so. See In re Rubin-
feld, 270 F.2d 391, 396 (C.C.P.A. 1959); see also In re
Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993) (“[T]he
drawings depict three slight variations on a single basic
design . . . . No objection has been made to this not un-
common practice.”). This principle is illustrated by Rubin-
feld, in which the disclosure included a first embodiment
(figures 1–4) showing a design of a floor waxer from
IN RE: MAATITA                                          11



different angles, and a second embodiment (figures 5–8)
showing essentially the same floor waxer design, but with
the addition of side braces. 270 F.2d at 392, 394. It was
clear what the patent intended to cover since, as the court
noted, the braces in figures 5–8 could have simply been
shown with dotted lines as immaterial parts. Id. The
court therefore determined that the entire disclosure was
directed to the same “inventive concept” and could be
included within a single claim. Id. at 396.
    On appeal, the government argues that we should as-
sess the indefiniteness of Maatita’s disclosure by employ-
ing the same analysis used for obviousness-type double
patenting situations, in which multiple drawings are
submitted with a single application to illustrate multiple
embodiments and the examiner must compare the overall
visual impression of the submitted drawings to see
whether they are distinct. See MPEP 1504.05 (citing In re
Rubinfield, 270 F.2d 391 (CCPA 1959)). In the double
patenting context, differences between embodiments are
considered insufficient to patentably distinguish them if
the differences are de minimis or would be obvious to a
designer of ordinary skill in the art. Id. Such an analysis
is inappropriate here. Maatita did not provide multiple,
potentially conflicting drawings. Rather, he provided one
drawing, and the Board ruled that it is indefinite and
non-enabled under § 112.
    Even under the correct test, which looks to how the
ordinary observer would interpret the drawing actually
included in the application, the government argues that
Maatita’s claim is indefinite because the design, as dis-
closed in the single, two-dimensional plan or planar view,
could be applied to a three-dimensional shoe bottom in a
number of ways. Specifically, the shapes specified by
Maatita’s design could be flat, concave, convex, or some
combination thereof. In Maatita’s view, the “relative
depths and three dimensionality between the surfaces,”
12                                            IN RE: MAATITA




J.A. 6, are not part of the claimed design at all, and the
differences between the possible three-dimensional im-
plementations of his design are simply differences in
unclaimed subject matter, see MPEP § 1504.04 (“[W]hen
visible portions of the article embodying the design are
not shown, it is because they form no part of the claim to
be protected”.)
     In situations like this, where the sufficiency of a dis-
closure for purposes of § 112 depends on whether a draw-
ing adequately discloses the design of an article, we
believe that the level of detail required should be a func-
tion of whether the claimed design for the article is capa-
ble of being defined by a two-dimensional, plan- or planar-
view illustration. The design for an entire shoe or teapot,
for instance, is inherently three-dimensional and could
not be adequately disclosed with a single, plan- or planar-
view drawing. Whether an article infringed would depend
on the perspective chosen to view the article, and a two-
dimensional drawing provides no fixed perspective for
viewing an article. The article would be infringing from
one perspective but not from another. The design of a rug
or placemat, on the other hand, is capable of being viewed
and understood in two-dimensions through a plan- or
planar-view illustration, which clearly defines the proper
perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938
WL 28182, at *2 (Com’r Pat. & Trademarks May 5, 1938)
(“It is recognized that flat articles can generally be suffi-
ciently illustrated by a single view.”). Such a claim, with a
single drawing, would cover all similarly designed rugs or
mats, even if one might have a low pile and the other a
high pile (for a rug) or might be woven or textured fabric
(for a placemat).
    The government emphasizes that a shoe bottom is a
three-dimensional article rather than a two-dimensional
“ornament, impression, print, or picture to be applied to
an article of manufacture,” In re Schnell., 46 F.2d 203,
IN RE: MAATITA                                           13



209 (C.C.P.A. 1931), and argues that the surface depths of
a shoe bottom impact the visual impression of the design.
The government is correct that a shoe sole is typically
three-dimensional, with treads that may be convex or
concave. And, indeed, many shoe bottom designers choose
to claim their designs in a three dimensional fashion. But
the fact that shoe bottoms can have three-dimensional
aspects does not change the fact that their ornamental
design is capable of being disclosed and judged from a
two-dimensional, plan- or planar-view perspective—and
that Maatita’s two-dimensional drawing clearly demon-
strates the perspective from which the shoe bottom should
be viewed. A potential infringer is not left in doubt as to
how to determine infringement. In this case, Maatita’s
decision not to disclose all possible depth choices would
not preclude an ordinary observer from understanding the
claimed design, since the design is capable of being un-
derstood from the two-dimensional, plan- or planar-view
perspective shown in the drawing. See Asano, 201
U.S.P.Q. at 317.
    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 in-
fringement. That is not what Maatita has done here.
                       CONCLUSION
    Because a designer of ordinary skill in the art, judging
Maatita’s design as would an ordinary observer, could
make comparisons for infringement purposes based on the
provided, two-dimensional depiction, Maatita’s claim
meets the enablement and definiteness requirements of
§ 112. We therefore reverse the decision of the Board.
                       REVERSED
