enabling with respect to enabling the examiner all but it made it that the invention was unable the disclosure on the appendix page seventy one that the and it says one of the ordinary skill could make and use multiple designs that could match applicants design so in essence you basically admitted that multiple designs were within the grasp of a they're saying that we we had to prove we had a narrower claim that our claim had to show you what's wrong with my state trying to understand what's going on well if well i think if the examiner if the board were correct we would have to x or whatever three dimensional aspect it wasn't just either whether there concave it would be relevant relative deaths so that could be different i mean there could be i mean he gave fo allowed to not show the entire article i mean there can be every design patent typically unless it's completely and solid line and every possible view happened here case  know everything just sam except you had another grind just simply to show the underlying structure only of the design well if it would show the underlying structure in another view and we've now narrowed our coverage we've narrowed it significantly and i think is the director of fifty to one or from a thousand to one well it's basically narrow this down to one application of what one particular  but indefiniteness basically says compare what's in the patent to what's in let's say a shoe box and it's just a visual impression so all anybody has to do in order to determine what the scope the claim is is take that matilda drawing take a shoe and look and if they have similar visual impression it's within the scope of the patent so i find this this case interesting because of that point it you know what exactly is it if it's something that's significant because i think when you look at infringement it's whether it's substantially similar from the usual stuff standpoint so if i think for the purposes of the material application what a person would do is look at the bottom look at the drawing look at the bottom of the triangle instead of you have a curved curved kind of a curved shape you have a triangle shape the i think if you look at the more case the more cases that the inventor of the applicant the finds his or her and then sion which is what did did the definition of his inventive concept this in his throat help you don't know that there's a heart in fast roll to be honest your honor but basically they would have to be fairly similar you know if it's something that's takes it outside a flake the scope of this significantly of the first figure body meant then the other one would not would probably be a separate invention but the question the issue from a teacher was there is only one design his design as a design is a design for an article and you could vary the article here and there to maybe make it look different if you were to look at other viewpoints for instance a tree with three eight different inventions they wouldn't be different could articulate different ways to achieve maci doesn't vention and that the because we're now looking at section one twelve and that somebody of would have to then select of all these broad broad claim but that's what he claimed over the examiner not understand how and i'm just trying to see if there's agreement on the basic law if you have more than one inventive concept you've got to have fact that it could be citric acid or some other type of ouse it doesn't mean that you had it can't cover all the houses this is just simply a broad claim it's one invented concept in all the cases where there's and it's just because you file a and because a design patent covers one invention you you can claim that broadly or the cases talk about that you can read you can take features out you don't have to include features if you want broader coverage  the cases where the inventive concept comes up is when somebody shows different in body mints in their application then the examiner might look at that and say you know i think you have different inventive concepts here but we only have one we have  i think one of the light these are three dimensional articles yet the you know the inventive cons there's just a single drawing and that's that's acceptable and though that's issued as a p that's hard to achieve in this area yes it is your honor but here we have a single two dimensional drawing is what we've got a plan view and when we have a two dimensional drawing what it applies to is a three dimensional design that's where the problem lies what what appellant is trying to get at what is the problem because when you're trying to get protection for designers three different base let me give you those three for a few basic categories category one would be like a print a picture would be on a flat surface like on a future or on a flat plate if that's all that it was seeking to claim in his designs just a simple print design there'd be no problem with this drawing it would be just fine but when you go to the next category the configuration category which is more of a three dimensional object where the design has an impact on the form of that object in that category there's a greater requirement for more disclosure and the reason is how does it impact the form of the object well he says in his claim i claim the following design for a shoe sole we know the shoe sole is necessarily going to be in a three dimensional form with recessed areas in fact when the examiner produced examples of what how that could possibly be viewed appellant agreed that those possible examples would be covered by the scope of that claim accordingly if you want to claim that covers something of that spoke which is in the three dimensional category of configuration designs you have to give a disclosure that is adequate for the ordinary arjan to understand what your design is the problem here are let me give you an example of a perspective view of a chair of a design for a chair which is a three dimensional object if you have a perspective you you can see the shapes and in the way the designs going to look if you give someone simply a plan view of a three dimensional object and when you're looking down at that play and you if there are many different ways that the three dimensions can be in vision then you have not given a clear understanding of the scope of that claim and furthermore you've not  the design who will structure we have it does because when we say beneath the design it's what's visible because if you walk into a shoe store and i look at a bunch of shoes on the shelf i flip them all over and look at the soles what's visible to me the three dimensional configuration that use all i'm not looking at plan the use of all those shoes on the stuff in the store so when we talked earlier a little bit about infringement i think the supreme court years ago clarified what that task was and this court  recently clarified it again is that it's the ordinary observer test so if an ordinary observer walks into a store and looks at all the shoes on the shelf and flips over the souls what is it that they're going to see they're going to see a three dimensional fusel they're not go d you do just looking at the credits why do you say you're looking at it three dimensional i mean here all you're looking you know you have these all little shape when you look at the drawing the think it's pretty clear what the design is w think if you look at the if we go back to peach for appendix page four of the board sitting where they reprint the examiners illustrations of possibilities of ways to envision it if you see there the examiner just giving examples he's saying here's for different ways patent is protected it's the visual impression given to that word near observer that's what they're looking at and these different configurations that can be imagined is where the problem lies because if an ordinary artisan cannot pick up the design pattern and look at the drawing in figure out what the configuration is but has to imagine hundreds of different possibilities that's speculation as oh no i've got protections that are hundreds of different but no i don't think so i think what could have been done the applicant used the solid lines in the dash lines appropriately again the solid lines become the claim subject matter the dash lines become the un flame subject matter cordingley you could still disclose multiple  indistinct and body myths but it's true by definition if you come in with the perspective you're drawing it is going to be narrower than what they're trying to get here but he wouldn't want that way it looks like i may have it all right in visioning what you're talking about in terms of how you could the the structure the way that the way the shoe sole looked whether these things were protruding or whether they risk recess and that doesn't mean they would have to claim every single line in every single distinct portion of that she will nevertheless you have to give an understanding of the three dimensional thing that you're trying to get a design pattern on and right now they haven't done that now it's true you can control the breath of your claim through the use of these dashed inside the minds but nevertheless that doesn't give you the right to just have uncontrolled which this plane falls into the category of they'd miss where the breath become so uncontrolled that it's not clear so the part of the problem is sometimes honest if you're allowed to have a single drawing with a two dimensional the situations which you can do that with a single two dimensional drawing and those in which you can let me read you a quote to help you with that garnered from the examiner cited repeatedly throughout his office action and the board cited that there's this all commissioner decision called solsbury and that's fine unfortunately there's not a lot of the case law in this air so what the agency relies on and what courts rely on when they to is very old commissioner positions and there's this all very decision and if you read what sells very says it's it's quite interesting it and it talks about the three different categories of articles you have flat articles which are flat and then you have these configuration type articles which have a three dimensional shape he says it's recognised that a flat article can generally be sufficiently illustrated by a single be likewise articles of a symmetrical nature are often sufficiently illustrated by a single well executed perspective since it can be deduced with certainty from one view how the article will appear from the other side however with articles that are  which present different appearances from different points of view one figure from a single point however well executed is not sufficient for complete disclosure so here's the problem if you've got an object that you know is symmetrical and you know it looks the same  all different angles it's very easy to hey hey here's one view and i'm telling you it looks the same in all different angles he only have to provide that you've sufficient disclosure here what we have is an  could be in any number of different ways and as a result a single view is inadequate to provide sufficient disclosure for this type of design so that's kind of the test and how you measure or how an examiner would determine whether or not the drawings  yeah these are other shoe sole designs i can't say for sure if these are perfectly flat with simply just a ornamental design on them or if they're three dimensional configurations it's not entirely clear to me it whether or not other patents an issue in violation of this principle or not i can't say what i can say is we had a flat sole a perfectly flat surface all and all we wanted to do was in print this design on the bottom of that flat saw and there were no tread yet i don't know because i don't we don't actually have those paths in front of us whether it's a singular drawing or not nevertheless never you can also have words in a design pattern if the design pattern would have set what we're seeking protection i simply the flat so with just the print no problem you could do it but that's what has happened to your flat what was at the soul would have to be flag zakk like it like a center sneaker in the old days when they played on clay courts they had flat sales or grass courts and flat soles and if you only wanted to do was in print a design on there with no deep depth in this room no raised levels that would be no problem but what you've got here is a three dimensional the bottom line is the principle that we're arguing is correct it's it's there for a good reason it's consistent with thirty five us code section one twelve and we want this court to give us a decision to make it clear because we have so little law in this area it's cleo and if it were and here's the problem again if you want to claim multiple in body and they have to be in distinct from each other which means the examiners illustrated three or four examples here and even these that mean interesting f it patently indistinct you are like what does that mean well in the design world we know there's a test of obviousness under the rosen reference and the rosen reference theory would determine whether or not something was obvious or not from something else and if you could that single claim has to be directed to a single invented concept and if you try to put in other claims in that patent application that are distinct pathway distinct what will happen is they'll be an automatic restriction and it will be the examples that he gave the four or five examples those are interesting from each other in fact i don't believe during the prosecution that appellant ever disagreed with that because the board said in their decision they  forth in a separate application the examiner would treat those as distinct and restrict them out that's what and that was never and so the unit as applied to determine what's patently distinct your you say we should apply the obvious does that mean that the test white think what happens is when the examiner evaluates the multiple and body gets an application will say r is a distinct from b and how do i figure that out we have to apply a pat ability distinction students and in the design world it's either anticipated or it's obvious and if it's neither of those little what's the test for obviousness though is the under the rosen doctrine there's something called the rosen reference which is basically the same as the other reference and then you have to have either a secondary reference or a reason why that happens the ordinary person would combine them together so the point is in the design world there is a way to evaluate just like there is in the utility world would you apply not just well the only reason that would ever come up is if we were trying to figure out whether two drawings that were submitted an application were distinct from each other that's the only reason here what we're talking about here is before that we haven't even reached that point i couldn't say whether just the difference in size would be enough they would have to run it through the pattern of distinctness evaluation to detroit is that yes now that's what i was trying to explain earlier is is that i know what i was trying to if there are multiple drawings in a single design application there has to be a determination made on whether or not they're distinct from each other in if they are they get restricted out under the mandatory restricted letters in the pi who want to help one or exactly none of that applies here what we've got here is a single drawing the single drawing is being evaluate in a thirty five years called one twelve and the examiner has said hey because i could imagine many many many possible configurations in the three dimensions from your single to mental of the observer look at this and say well look at henderson and these three configuration but i can imagine whole lot more well i think if that's the whole point we're trying to get the patent if the patent issues with the office wants is let's nail it down what is the thing that you're claiming if we know what we want we don't want to guess that there's a hundred we want to know what it is that you're claiming what is your design what is the visual impression that you're protecting in the three dimensional configuration context and if you can make that clear from your drawing no problem i thought there was an additional point which does fit into that whether it's patently distinct or a different event in concept which is i hear your adversar responses was no that wouldn't work because there are so many different possible possibilities and they wouldn't be patently and they would it would be patently disdain and you could only have your invention single dimensional drawing the problem would be if we want to take that patent drawing and we want to compare that to the alleged infringing device an illegible fringing article and the problem would be we're now comparing a two dimensional planned view to a three dimensional object but since there are all these possibilities that could be alleged infringing devices it would be very difficult for us to nail down what's infringing and what's not infringing all we would be looking at is this planned the use of the ordinary observer test would have a very difficult they'd have a very difficult time of applying that test in the infringement context without an adequate disclosure i think that's what i was trying to say i apologize if i've been talking a little bit too quickly because i thought a lot of information here and if i was a little too fast and i misstated i apologize i don't know if that helps it's kind of the policy behind why we need to be somewhat scrutinizing with one twelve because if we have before the patent issues then there's not a problem later when the patent gets forced that's what we're trying to do and i think the office is acting in mightily that we have to make sure the claim is unable not just for a part of the claim but for the full scope of the cla what the examiner did was add in limitations that are not part of our claim it's a genius claim granted it's broad but it's very simple for someone to take the bottom of the shoe this drawing and looked at the visual impression and decide whether wasn't shown completely it was a car it was one drawing you can't see the back of the car in the drawing therefore they said that solsbury said it's invalid because it doesn't have a complete disclosure of the article is on made clear it's a design for an article it's we're not designing an article and what the examiner or at pelly are trying to do or add limitations that are not in our claim from now that feasible yes your honor thank you thank you thank both sides and will look for question in situations where there's a single go