The theory underlying broken line practice in design patent prosecution is relatively simple. Broken lines typically show portions of an article that form no part of the claimed design, unclaimed environment to the article, or boundaries of the claimed design. Despite these relatively simple concepts, numerous objections and rejections continue to issue over broken line statements in design patent applications. These objections and rejections often result from misunderstandings by design patent applicants and the confusion over broken line principles.
This introductory Part 1 will begin with recommended forms for three common broken line statements and a note on grammar, brevity, word choice, and word order. Part 2 in this series will address how to avoid ten common rejections to broken line statements. Then for those interested in why broken line statements commonly are rejected and the rationale underlying how to avoid these rejections, Part 3 will review the history and development of broken line principles in design patents and discuss their current state. Part 4 will consider two major areas of confusion. Part 5 will review important general principles. Part 6 will review other common rejections, rejections in GUI Design Patent Applications, and rejections involving figures containing broken lines. Part 7 will set forth a broken line statement checklist to review before filing a design patent application.
Drawing Figures from Two Important Cases in Broken Line Statement Development
In re Blum, 374 F.2d 904 (CCPA 1967) “Design for Handrail Unit”
App. No. 67,307, filed Oct. 30, 1961
“The dominant features of my new design reside in the portions shown in full lines.”
In re Zahn, 617 F.2d 261 (CCPA 1980)
“Drill Tool Or The Like”
USD 257,511, Issued Nov. 11, 1980
“The phantom representation of the cutting portion of a drill bit is made in the drawings merely for the purpose of illustrating the environment in which this invention is used. The structure shown in broken lines is not part of the design to be patented.”
Note that neither Feature (Broken Line) Statement (in red) is proper under current practice standards.
Recommended Form for Three Common Broken Line Statements
At a minimum, a broken line statement must identify what is represented by the broken lines and define the relationship to the claimed design. Examples of recommended forms for three common broken line statements are shown below. The blue words identify what is represented by the broken lines and the red words define the relationship to the claimed design.
1. When broken lines show portions of the [title] that form no part of the claimed design: The broken lines show portions of the fishing reel that form no part of the claimed design.
2. When broken lines show environment to the article and form no part of the claimed design: The broken lines show environment to the Golf Bag with Attached Golf Towel and Bag and form no part of the claimed design.
3. When the broken lines represent boundaries to the claim: The broken lines show boundaries to the claim and form no part of the claimed design.
A Note on Grammar, Brevity, Word Choice, and Word Order
A typical broken line statement begins with a subject noun phrase (The broken lines), a transitive verb (show), a direct object (portions), and a prepositional phrase (of the [title]) that modifies the direct object. This portion of the sentence identifies what is represented by the broken lines. The statement then typically includes a restrictive clause (that form no part of the claimed design) that begins with a relative pronoun (that). Alternatively, the statement can include language that begins with a conjunction (and). This portion of the sentence defines the relationship of the broken lines to the claimed design.
Many broken line statements contain verbs other than “show.” For example, the verbs “illustrate, depict, represent, indicate, and denote” often are used. Any of these verbs are acceptable. Some advantages of using the verb “show” are that is a short, simple word and is similar to the word “shown,” as used in the claim statements “as shown,” or “as shown and described.”
Broken line statements often include the prepositional phrase “in the drawings,” or “in the drawing figures” after the subject noun phrase “the broken lines.” This phrase is unnecessary unless needed to identify a broken line in a particular drawing figure, such as “the broken lines in Fig. 2 show environment to the [title] and form no part of the claimed design.”
The relative pronoun “that” is sometimes replaced with the relative pronoun “which.” This is usually improper because the clause “that form no part of the claimed design” is a restrictive clause that is essential to the meaning of the broken line statement. The use of “which” indicates that the clause is nonrestrictive, or nonessential to the meaning of the statement.
The conjunction “and” is sometimes used instead of the relative pronoun “that” in a statement where the broken lines show portions of the [title]. That is improper. When “and” is used, the statement can be interpreted that only the broken lines form no part of the claimed design and not that the portions of the [title] shown by the broken lines form no part of the claimed design. By the using the relative pronoun “that,” it is clear that the portions of the [title] shown by the broken lines form no part of the claimed design.
The selection and order of words used in a broken line statement are important. Although there is some flexibility in the language that can be chosen, the necessary precision of a broken line statement requires that the language and its sequencing convey a certain meaning. When words are not placed in the proper order, the meaning of the broken line statement can change. For example, a proper broken line statement would be “the broken lines show portions of the [title] that form no part of the claimed design. When the word order is changed to “[p]ortions of the [title] shown in broken lines form no part of the claimed design,” the statement could be interpreted as meaning that only portions of the broken line subject matter, rather than all of the broken lines, are not claimed. Therefore, some of the broken lines could be claimed according to this improper description.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
