Top 50 Design Patent Cases #4 In re Blum
The number four cited case in design patent prosecutions is In re Blum, 374 F.2d 904 (CCPA 1967). This case stands for two principles. First, broken lines may not be used to represent an immaterial or unimportant part of a claimed design. Second, when broken lines are used in a drawing figure, the specification must make entirely clear what they mean. Since January 2021, it has been cited in at least 4,682 design patent prosecutions having at least one non-final rejection (according to Design Patent ProSearch).
How this case fits in: To be patentable, a claimed design must be properly described, enabled, and claimed under 35 U.S.C. § 112(a) and (b). This case clarifies that broken lines must be properly used and described to satisfy the requirements of section 112.
In re Blum involved a design patent application for a “Design for a Handrail Unit.” The two drawing figures are as follows:
The Patent Office rejected the claimed design as obvious over a prior art catalog railing illustration and both the Board and the CCPA affirmed the rejection. The importance of the case lies in the discussion over the broken lines shown in both drawing figures.
The patent examiner first objected to the inclusion of the broken lines. When the applicant refused to remove them, the examiner rejected the claim as indefinite under section 112 because “the dominant features of the claimed design have not been pointed out in the specification.” Id. at 1232. Applicant then added the sentence “[t]he dominant features of my new design reside in the portions shown in full lines,” and also added “and described” in the claim after “shown,” The examiner then withdrew the 112 rejection and gave a final rejection for obviousness based on the prior art railing figure shown in the catalog.
The examiner considered the claimed design as having two different embodiments (with the rail attached to either the top or side of the post), and therefore considered the broken line portions to be part of the claim. The Board disagreed. Citing In re Wise, 340 F.2d 982 (CCPA 1965) and MPEP Section 1503.02, the Board considered the broken line portions of the drawings as immaterial to the patentability of the design.
In light of this conflict, the CCPA directly addressed the issue of whether the design elements illustrated in broken lines were part of the claim. The Court stated “[d]otted 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.” 374 F.2d at 1234. The Court also criticized the wording of the MPEP (set forth below) because “there are no portions of a design which are ‘immaterial’ or ‘not important,’” and “[a] design is a unitary thing and all of its portions are material in that they contribute to the appearance which constitutes the design.” Id.
At the time In re Blum was decided, 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 should 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 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.”
Comment:
The use of dotted and broken lines for claimed designs has a complex history. Early design practitioners used dotted and broken lines for a variety of reasons, including showing alternate designs, alternative positions of a design, environment, portions of the design obscured by other structure, and to signify immaterial, unessential, or nondominant portions of the claimed design.
The Sixth Revision of the Manual of Patent Office Procedure (MPOP) (predecessor to the MPEP) set forth the principle that a dotted or broken line served as notice that the portion shown was not a material part of the design. The preferred practice was to make a positive statement that the solid lines represented the material portions of the design. It was then implied that the dotted lines represented the immaterial portions of the design. Unlike modern practice, the portions shown in dotted or broken lines were considered to be a part of the claim.
The MPOP also included two important and related principles that influenced broken line practice. First, a complete article had to be shown in the drawing figure(s) submitted. Second, statements intended to disclaim portions of a design were not permitted.
The above four principles attempted to strike a proper balance between the requirements of (1) showing a complete article and not allowing any negative disclaimers and (2) allowing applicants flexibility in the article shown and the ability to emphasize the novel and nonobvious features of their claimed designs.
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 re Wise, 52 C.C.P.A. 936, 340 F.2d 982 (C.C.P.A. 1965) approved this use of broken lines. 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.” Id. at 938.
In sum, during this early period, broken lines often were used to identify immaterial portions of the design. When so used, the specification had to include a positive statement indicating that the dominant features of the design were in the portions shown in full lines. It then would be implied that the broken lines represented immaterial features of the design.
Two years after In re Wise, the Court reversed course in In re Blum. As discussed above, the CCPA in Blum revisited the issue of whether broken lines could be used to show immaterial or unimportant portions of the design. 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.’”
