To fully understand the current confusion that exists in broken line practice and how best to avoid objections and rejections, it is helpful to consider the development of design patent prosecution and how case law influenced revisions to Chapter 1500 of the Manual of Patent Examining Procedure (MPEP). These revisions reflect changing prosecution approaches, new case holdings, and attempts to address and resolve practical problems arising as legal principles shifted. Unfortunately, the revisions sometimes led to further confusion that still exists today.
Broken line practice in design patent prosecution has evolved significantly since broken and dotted lines first appeared in design patents in the 1840s. Early practitioners used dotted and broken lines for a variety of reasons, including showing alternate designs, showing alternative positions of a design, showing environment, showing portions of the design obscured by other structure, and to signify immaterial, unessential, or nondominant portions of the claimed design. Notably, the current widespread practice of using broken lines to show portions of an article that form no part of the claimed design did not exist. As discussed below, many of the early uses of broken lines now are prohibited.
Manual of Patent Office Procedure
The Manual of Patent Office Procedure (MPOP) first was published in 1920 by the Patent and Trademark Office Society. The MPOP was the predecessor patent manual to the MPEP, which was first published by the United States Patent and Trademark Office (USPTO) in 1948-1949. The original MPOP did not address design patent principles, but later revisions did. The Sixth Revision, published in 1932, contained an eleven-page section on designs. This section addressed dotted and broken lines and set forth two basic principles.
First, when it was obvious that an ornamental design could be applied to articles other than the one shown, it was only necessary to apply the design to one article of conventional configuration, and such article could be shown in dotted line. A statement could be included in the specification that the design is shown as applied to a [article name] of conventional shape. This practice was similar to, but not the same as, the current practice of illustrating environment with broken lines.
The second principle was that a dotted or broken line showing served as notice that the configuration or part shown was not a material part of the design. The preferred practice was to make a positive statement in the specification that the full lines represented the material portions of the design. It was then implied that the dotted lines represented the immaterial portions of the design. In short, dotted and full-line illustration was used to differentiate between the material and immaterial parts of the design. Importantly, unlike modern practice, the conventional configurations or immaterial portions shown in dotted or broken lines remained a part of the claim.
The MPOP also set forth two related principles that influenced broken line practice. First, a complete article had to be shown in the drawing or drawings submitted. Second, statements that sought to disclaim portions of a design were not permitted.
These four principles expressed in the MPOP were based on decisions of the Commissioner of Patents that attempted to balance the requirements of (1) showing a complete article and not allowing any negative disclaimers with (2) allowing applicants flexibility in the article shown and the ability to emphasize the novel and nonobvious features of their claimed designs.
Manual of Patent Examining Procedure
When the Original MPEP was published in 1948-1949, the concept expressed in the MPOP of using dotted or broken lines to illustrate immaterial or unimportant portions of the design was included in Section 17 entitled “Design Patents.” Under the section “Specification and Claim,” the MPEP stated “recourse may be had to dotted and full line illustration to differentiate between the immaterial and material parts of the design.”
Under “Drawing,” the MPEP stated:
“Dotted or broken line showing is also employed to show such portions of the article claimed which are not important. Such a showing would be explained in the specification by a statement that the dominant features of the design reside in the portions shown in full lines. In every case dotted line showing is notice that the portion so shown is an immaterial part of the design.”
In 1965, the United States Court of Customs and Patent Appeals (CCPA) approved this use of broken lines in In re Wise, 52 C.C.P.A. 936, 938, 340 F.2d 982 (C.C.P.A. 1965). The Court stated “appellant … stated in her specification that ‘[t]he dominant features of the design are those shown in full lines,’ and considered the portion shown in dotted lines as, in the language of the cited section of the Manual, ‘an immaterial part of the design.’ As did the board, we so regard the ‘dotted line’ phase of this case.”
The Original MPEP also addressed the use of dotted lines to show environment. The ability to show environment was a relaxation of an earlier principle that allowed only the article embodying the design to be shown. Under “Drawing,” the MPEP stated:
“In general, the showing should be strictly confined to the article on which design patent protection is sought and no additional disclosure in the nature of structure to illustrate environmental use or association with other apparatus not an actual part of the design, is ordinarily permitted. Only in those cases where clarity of disclosure would be greatly sacrificed is such extraneous showing allowed, and in such cases it is permitted only be showing the same in dotted lines with a statement inserted in the specification to the effect that the dotted line showing is for illustrative purposes only.”
To restate, during this period, broken lines often were used to identify immaterial parts of the design and to illustrate environment that was not part of the article. If used to identify immaterial portions of the design, then the specification should include a positive statement indicating that the dominant features of the design resided in the portions shown in full lines. It would be implied that the broken lines represented immaterial features of the design. If the broken lines were intended to identify environment, then a statement was required that the broken line showing was for illustrative purposes only. Unfortunately, the “illustrative purposes only” language requirement created an ambiguity since an illustration of broken lines could have more than one purpose. This ambiguity was recognized, and the required language gradually changed in later revisions of the MPEP as discussed below.
Two years after In re Wise was decided, the Court reversed course in In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). In In re Blum, the CCPA revisited the issue of whether broken lines could be used to show immaterial or unimportant portions of the design. This time the Court held no, reasoning that it was necessary to make “entirely clear” the meaning of all broken lines and that since a design is a “unitary thing,” “there are no portions of a design which are ‘immaterial’ or ‘not important.’” The Court stated:
“Dotted and broken lines may mean different things in different circumstances and all we wish to say here is that in each case it must be made entirely clear what they do mean, else the claim is bad for indefiniteness under 35 USC 112. It is the examiner’s responsibility to obtain such definiteness. A “dominant feature” statement is not calculated to obtain it. Neither is the wording of the Manual [footnote omitted] as there are no portions of a design which are “immaterial” or “not important.” A design is a unitary thing and all of its portions are material in that they contribute to the appearance which constitutes the design. There is a distinction to be observed between parts of the total article illustrated, in which a new design is embodied, and parts of that article which embody none of the design, Such a part is, presumably, what the Manual means by the reference to “an immaterial part of the design.” Actually, it is no part of the design but a part of the article unrelated thereto. It is environment only. The distinction should also be maintained between the design and its environment. It is fatal to clarity to consider the latter as any part of the former, as the Manual appears to do.”
54 C.C.P.A. 1231, at 1234, 374 F.2d 904, at 907.
In response to In re Blum, Revision 20 of the Third Edition of the MPEP (published in April 1969) eliminated the language allowing dotted or broken lines to show immaterial portions of the design. In its place, the MPEP stated:
“The ornamental design which is being claimed must be shown in solid lines in the drawing. Dotted lines for the purpose of indicating unimportant or immaterial features of the designed article are not permitted. There are no portions of a claimed design which are immaterial or unimportant. In re Blum, 852 O.G. 1045; 153 USPQ 177.”
Use of the phrase “designed article” later was criticized by the CCPA in In re Zahn, 617 F.2d 261 (CCPA 1980) because in In re Blum the CCPA did not speak of a “design article” but of a design. This distinction would be important to the CCPA’s holding in In re Zahn that only a portion of an article could be claimed (discussed further below).
Although the ability to illustrate immaterial portions of the design with dotted lines was eliminated in Revision 20, the MPEP retained the principle of using broken lines to disclose environmental structure, stating “[d]isclosure of environmental structure must always be set forth by means of broken lines.” Applicants continued using broken lines to show environment and over the course of time several prosecution issues arose. In January 1973, the Third Edition of the MPEP, revision 35, expanded upon the use of broken lines for showing environment and addressed these prosecution issues, stating:
“The drawing disclosure should make clear the article on which design patent protection is sought. Environmental structure may be shown only in broken lines, where necessary, as where the nature and intended application of the claimed design cannot be adequately indicated by a reasonably concise title or statement in the specification as set forth in § 1503.01. Such showing by broken lines should not be in a manner as to obscure or confuse the appearance of the claimed design (note 35 U.S.C. 112). In general, such broken lines should not intrude upon or cross the showing of the claimed design; and should not be of heavier weight than the lines used in depicting the claimed design. Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design, an illustration of the article with the broken line showing of environmental structure may be included as a separate figure in addition to the figures fully disclosing the article itself for which the design protection is sought. The specification should make it clear that the structure shown in broken lines is not part of the design sought to be patented.”
In 1980, the CCPA decided In re Zahn, 204 USPQ 988 (CCPA 1980), which permitted only a portion of an article to be claimed and allowed broken lines to represent the unclaimed portion. In January 1995, the Sixth Edition of the MPEP reorganized and rewrote broken line principles into Section 1503.02 C. This version of the MPEP added the following language regarding In re Zahn:
“Structure that is not part of the claimed design but is considered necessary to show the environment in which the article is used may be represented in the drawing in broken lines. Additionally, a portion of an article that is not considered part of the design may be shown in broken lines, In re Zahn, 204 USPQ 988 (CCPA 1980). A broken line showing is for illustrative purposes only and forms no part of the claimed design.”
Additionally, the language regarding In re Blum was rewritten as follows:
“However, broken lines are not permitted for the purpose of indicating that a portion of an article is of lesser importance in the design, [citing In re Blum]. The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design, and is not to indicate the relative importance of parts of a design.”
Use of the term “or” in the sentence after the In re Blum citation appeared to indicate that an unclaimed portion of the article was being distinguished from environmental structure.
In July 1998, the Seventh Edition of the MPEP significantly expanded the section on broken lines and made four substantive additions. First, the second sentence in the section was modified to make it appear that unclaimed portions of the article now were to be considered as environment. Specifically, the beginning of the second sentence was changed from “[a]dditionally” to “[t]his includes any,” as follows:
“Structure that is not part of the claimed design but is considered necessary to show the environment in which the article is used may be represented in the drawing in broken lines. Additionally, a This includes any portion of an article that is not considered part of the design may be shown in broken lines, In re Zahn, 204 USPQ 988 (CCPA 1980).”
Although this change appeared to reclassify unclaimed portions of an article as environment, another sentence in the broken line section confusingly remained unchanged that appeared to treat unclaimed portions of the article as different from environment, as follows: “[t]he use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design, and is not to indicate the relative importance of parts of the design.” (emphasis added).
The second addition was the language “or a specified embodiment thereof” added to the sentence “[a] broken line showing is for illustrative purposes only and forms no part of the claimed design.” This addition reflected the reality that although a design patent could have only one claim, the design patent could have multiple embodiments if such embodiments were not patentably distinct from one another.
The third addition was a description of the use of broken lines as boundaries, as follows:
“A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter. Any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR l.12l(a)(6).”
This addition addressed the practice of using broken lines as boundaries. Although early practice had used broken lines as boundaries when defining portions of patterns that repeated, the use of broken lines to define an unclaimed boundary accelerated in the 1970s when vehicle tire applicants began disclaiming the non-tread portions of the tires with broken line boundaries. This practice required clarification of what the broken line boundaries represented and the clarification was provided by the MPEP. Unfortunately, the last sentence stating “[a]ny broken line boundary other than a straight broken line may constitute new matter ….” was unclear as to whether the addition of a straight broken line boundary always could avoid a new matter rejection. This issue would be addressed fifteen years later by the Federal Circuit in In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013) (see discussion below).
The fourth addition was a sentence stating “[b]roken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials.” This addition expressly prohibited a widespread early practice of showing hidden features with dotted and broken lines.
In February 2000, Revision 1 of the Seventh Edition MPEP included three additions. First, in recognition of the widespread practice of using broken lines to disclose unclaimed environment and unclaimed boundaries, an introductory sentence was added stating “[t]he two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim.” This sentence appeared to reaffirm the classification of unclaimed portions of the article as falling under the umbrella term “environment.”
Second, language was added explaining (1) the different meaning that resulted when broken lines defined as environment and broken lines defined as boundaries crossed over full lines, and (2) the importance of explicitly defining the purpose of the broken lines:
“When broken lines cross over the full line showing of the claimed design and are defined as showing environment, it is understood that the surface which lies beneath the broken lines is part of the claimed design. When the broken lines crossing over the design are defined as boundaries, it is understood that the area within the broken lines is not part of the claimed design. Therefore, when broken lines are used which cross over the full line showing of the design, it is critical that the description of the broken lines in the specification explicitly identifies their purpose so that the scope of the claim is clear. See MPEP § 1503.02, paragraph III. As it is possible that broken lines with different purposes may be included in a single application, the description must make a visual distinction between the two purposes; such as –The broken lines immediately adjacent the shaded areas represent the bounds of the claimed design while all other broken lines are for illustrative purposes only; the broken lines form no part of the claimed design.—”
Third, language was added stating “surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim.” This language was added because surface shading indicated that the shaded portion of the design was claimed, and if shading was included within broken lines, it produced conflict and confusion as to whether the area was claimed. As explained further below, there currently is confusion in this area as to whether lightly shaded areas in computer assisted drawings (CAD) may be included within broken lines and whether such shaded areas, if originally included in the drawings, may be completely removed without incurring a new matter rejection.
In May 2004, Revision 2 of the Eighth Edition recognized the ambiguity of the phrase “for illustrative purposes only” and added the underlined language to this sentence “[t]he broken lines immediately adjacent the shaded areas represent the bounds of the claimed design while all other broken lines are directed to environment and are for illustrative purposes only; the broken lines form no part of the claimed design.” Unfortunately, Revision 2 inconsistently did not change the earlier sentence “[a] broken line showing is for illustrative purposes only and forms no part of the claimed design or a specified embodiment thereof.”
Two years later, in August 2006, Eighth Edition, Revision 5 eliminated the inconsistency by changing the sentence “[a] broken line showing is for illustrative purposes only and forms no part of the claimed design or a specified embodiment thereof” to the following two sentences:
“Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof.”
In 2013, the Federal Circuit decided In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013). In re Owens addressed the issue of whether the addition of a straight broken line boundary always would avoid a new matter rejection. The Court said no, and that there must be antecedent basis in the original drawing to add a straight broken line. For future guidance in this area, the Court agreed with the USPTO’s position that “unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.”
In March 2014, the Ninth Edition of the MPEP added the following language in response to the Federal Circuit’s holding in In re Owens:
“When a boundary line is introduced via amendment or in a continuation application, the introduction of the boundary line must comply with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). See In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013). For example, unclaimed boundary lines typically should satisfy the written description requirement where they make explicit a boundary that already exists, but was unclaimed in the original disclosure. See Owens, 710 F.3d at 1368-69, 106 USPQ2d at 1252.”
The above review of broken line principles reveals that many principles have evolved, changed, or have been clarified. However, several areas of confusion remain and are the source of frequent objections and rejections. For example, there is a conflict as to whether unclaimed portions of the article should be considered under the umbrella term of “environment.” Second, although the language “are for illustrative purposes only” has been considered as too ambiguous, this language remains in the MPEP and is frequently included in original broken line statements. Third, confusion exists as to what type of shading may be included within broken lines and whether such shading can be removed without incurring a new matter rejection.
The General Current State of Broken Line Principles
As discussed above, the practice of using broken lines and related statements has gone through a considerable evolution since the 1840s. Many early common customs now are forbidden, and certain practices prohibited in early practice, such as claiming only a portion of an article, now are permitted. In general, the rules for broken lines have settled into a predictable legal framework and are relatively well established. Once understood, these rules are reasonably easy to follow. However, as mentioned above, there still are several issues that continue to cause confusion and are the source of many examiner objections and rejections during prosecution.
The first important thing to understand about using broken lines in modern practice is that they may be used for many different purposes to show (1) portions of an article that form no part of the claimed design, (2) environment to the article, (3) boundary lines, (4) stitch lines, (5) fold lines, (6) perforations, and (7) other surface indicia. In the first three uses, the broken line disclosures form no part of the claimed design. In the last four, they are part of the claimed design.
Since broken lines may be used for many different purposes in the same design patent application, it is necessary to describe the purpose of the broken lines in a statement. The meaning of the broken lines must be completely and accurately accounted for. To satisfy this requirement, the broken line statement must do two specific things. First, it must expressly identify what is represented by the broken lines. For example, broken lines represent unclaimed portions of the article, unclaimed environment, or unclaimed boundaries. Second, the relationship of the broken lines to the claimed design must be defined. For example, that the broken lines form no part of the claimed design. If this is not done, then the examiner should object to, or reject the claim on the basis that it is indefinite under section 112.
Additional rules existing in current practice are that broken lines may not be used to (1) indicate the relative importance of design portions, (2) show hidden planes and surfaces that cannot be seen through opaque surfaces, and (3) show alternative positions of a design.
Two major areas of ambiguity and confusion that remain in broken line statement practice are whether and how the language “are for illustrative purposes only” can be used and whether unclaimed portions of the article should be considered as environment.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
