Use of the Phrase “are for illustrative purposes only”
The confusion over whether and how to use the phrase “are for illustration purposes only” in a broken line statement is understandable. The MPEP expressly recommended use of the phrase without any reference to environment or other qualifier up until August 2006, when the Eighth Edition, Revision 5 eliminated the sentence “[a] broken line showing is for illustrative purposes only and forms no part of the claimed design or a specified embodiment thereof”. Thousands of issued design patents contain the phrase in their broken line statements.
Section 1503.01 III of the MPEP still recommends use of the phrase “[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”. (Confusion over the use of the term “environment” in this sentence is addressed below). The Design Patent Application Guide published on the USPTO website in the broken line section states “[a] broken line disclosure is understood to be for illustrative purposes only and forms no part of the claimed design.”
Given the above, it is not surprising that many patent applications continue to use the broken line statement “[b]roken lines in the drawings are for illustrative purposes only and form no part of the claimed design.” Unfortunately, Examiners are inconsistent with their response to such a statement. Some will allow it, while others issue a rejection. Examples of recent patents that contain the statement are:
1. US D977,305 (Waffle Maker – Issued Feb. 7, 2023) (“The broken lines are for illustrative purposes only and form no part of the claimed design.”)
2. US D977,063 (Shower Head – Issued Jan. 31, 2023) (“The broken lines in the drawings are for illustrative purposes only and form no part of the claimed design.”)
3. US D976,323 (Game Board – Issued Jan. 24, 2023) (“The broken lines in the drawings are for illustrative purposes only and form no part of the claimed design.”)
Examiners who issue a rejection typically will explain:
The description of all the broken lines as being “for illustrative purposes only” is objectionable, since it does not clearly describe what the broken lines are illustrating. See In re Blum, 153 U.S.P.Q. 177, 180 (CCPA 1967). In design patents, the drawings are the illustration of the claim, thus describing portions as being “for illustrative purposes only” has no clear meaning.
Examples of patent applications where a rejection has issued are:
1. App. 29/813,996
Original: “The broken line showing is for illustrative purposes only and forms no part of the claimed design.”
Rejection: The back panel of the backpack in fig. 6 shows broken lines that are described in the specification as being for “illustrative purposes”. The term “for illustrative purposes” does not describe the meaning of the broken lines as either stitching, portions of the article, environment or boundaries. MPEP 1503.02(111)….
2. App. 35/510,104
Original: “The broken line showing is included for the purpose of illustration and forms no part of the claimed design.”
Rejection: The disclosure does not describe the meaning of the broken lines as portions of the article, environment or a boundary. The term for illustrative purposes does not describe the purpose of the broken lines. One skilled in the art must resort to conjecture in order to determine the meaning.
3. App. 29/824,478
Original: “The broken lines are for illustrative purposes and form no part of the present invention.”
Rejection: The term “illustrative purposes” in the broken line statement preceding the claim does not describe the meaning of the broken lines.
Examiners who issue a rejection to the phrase have the better position. For several reasons, is important to know whether broken lines represent unclaimed portions of the article embodying the design, unclaimed environment to the article, or unclaimed boundary lines.
First, the title of the design patent must accurately describe the article and must not claim less than the article. If the broken lines are described as “for illustrative purposes only,” then the broken lines could represent unclaimed portions of the article or unclaimed environment to the article, and it would not be clear what the article is and what the non-article environment is. This potentially sets up ambiguity and indefiniteness regarding the title properly matching the article.
Second, the article is relevant to the prior art that is considered against the claimed design both for validity and infringement purposes. If the article is ambiguous, then relevant prior art cannot be determined, and a proper invalidity and infringement analysis may be more difficult or impossible.
Third, a restriction analysis is based on the article embodying the design. If two embodiments contain broken lines that are not clearly described, then the broken lines may represent unclaimed portions of the article or unclaimed environment to the article. This ambiguity usually would need to be resolved before an examiner could determine whether the designs are patentably distinct from one another. 35/509,148
Fourth, unclaimed boundaries are treated differently than unclaimed portions of the article or unclaimed environment to the article. As explained in the MPEP:
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.
When the broken lines are not defined, then it is not known whether the area that lies beneath or within the broken lines is or is not part of the claim.
Recommended Best Practice: There is no reason to use this confusing phrase, so a best practice would be to not use it. You may have an Examiner who will issue a rejection if the phrase is used, which will add additional prosecution time and effort responding to the rejection. Further, given the number of rejections and the reasoning behind them, an indefiniteness defense could be raised during litigation, which at a minimum, will add additional litigation time and expense, and will add uncertainty to the enforceability of the design patent.
It is easy to draft a proper broken line statement without using the phrase. For example:
If the broken lines are used to illustrate unclaimed portions of the article, then the statement could say “[t]he broken lines illustrate portions of the [title of article] that form no part of the claimed design.”
If the broken lines are used to illustrate unclaimed environment to the article, then the statement could say “[t]he broken lines illustrate environment to the [title of article] and form no part of the claimed design.”
If the broken lines are used to illustrate unclaimed boundary lines, then the statement could say “[t]he broken lines illustrate boundaries that form no part of the claimed design.”
Are Unclaimed Portions of the Article Properly Described as Environment?
Design Patent Examiners are split on whether unclaimed portions of the article should be considered as environment. Some follow the MPEP interpretation of In re Zahn that unclaimed portions of the article are properly described as environment. For example, in App 29750142 (now D) the applicant submitted drawings with broken lines but failed to submit a broken line statement. The Examiner issued a rejection and quoted the MPEP language describing unclaimed portions of the article design as being environment:
“Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. In re Zahn,”
Other Examiners draw a clear distinction between the two. For example, in App. 29/796,922, the Examiner stated:
“However, it appears the broken lines represent both portions and environmental subject matter. While environmental subject matter is descriptive of subject matter beyond the article embodying the design, portions are descriptive of actual parts of the article manufacture. (emphasis added).”
In App. 29/705,714, the Examiner stated:
“The broken line description is objectionable because it does not explicitly state what the broken lines represent. In accordance with the requirements set forth in MPEP § 1503.02 (III), a broken line statement should describe the broken lines on the drawing as either portions of the article or environmental structure. Portions are descriptive of actual parts of the article of manufacture while environmental structure is descriptive of matter beyond the article of manufacture, as well as the conditions in which the article embodying the design is used. (emphasis added).”
In App. 29/717,189, the Examiner stated:
“The broken-line description should expressly identify what is represented by the broken lines in addition to defining their relationship to the claimed design (MPEP 1503.01 (II)). In this case, identifying the broken lines as “environment” is not an accurate description because they show portions of the article and not its environment. (emphasis added).”
In App. 29/749,098 the Examiner stated:
“Broken lines: Environment is broken line subject matter that is NOT the article named in the title. Since portions of the article named in the title are shown in broken lines, they should not be described as ‘environment.’”
In App. 29/652,387, the Examiner stated “[b]roken lines may indicate portions of the article, boundaries of the claim, or environmental matter.” In App. 29/818,096, the Examiner stated “[i]n this case, it appears that the claim is a portion of the article and not environment.” In App. 29/646,828, the Examiner stated “[b]roken lines illustrating portions of the animated computer icon that form no part of the claim are not ‘environment’ but rather portions of the article of manufacture.”
Some examiners provide an explanation of potential problems created when a clear distinction is not drawn between unclaimed portions of the article design and the environment to the article. For example, in App. 29/764,252, the applicant submitted the original broken line statement “[t]he portions shown in broken lines illustrate the environment of the design and form no part of the claimed design.” The Examiner issued a rejection, stating:
“Although the description of the broken line showing is not entirely inaccurate, it is inadequate in its explanation of what the broken lines show. Merely stating the broken lines illustrate environment of the design does not actually identify what the subject matter is. Furthermore, it could also be misconstrued as suggesting that the motorcycle portions depicted are environment to the article.”
The split and confusion among Examiners is understandable given the contradictory statements in the case law, code of federal regulations, MPEP, and USPTO Guide to Filing a Patent Application.
When deciding which side of the split to follow, it is helpful to understand the importance of knowing whether broken lines are unclaimed portions of the article design or unclaimed environment to the article.
First, the title of the design patent must accurately describe the article and must not claim less than the article. If the broken lines are described as “environment” and the term environment is interpreted as potentially including both unclaimed portions of the article design and unclaimed environment to the article, then it is not clear what the article is and what the environment to the article is. This potentially sets up ambiguity and indefiniteness regarding the title properly matching the article.
Second, the article is relevant to the prior art that is considered against the claimed design both for validity and infringement purposes. If the article is ambiguous, then relevant prior art cannot be reliably determined, and a proper invalidity and infringement analysis may be more difficult or impossible.
Third, a restriction analysis is based on whether the claimed embodiments are patentably distinct from one another. If it is unclear what the scope of the claim is due to ambiguity between the article and the article’s environment, then a proper restriction analysis cannot be done.
Recommended Best Practice: Considering the important reasons above for distinguishing between unclaimed portions of the article design and unclaimed environment to the article, and the likelihood that an Examiner may issue a rejection, the recommended best practice is to make a clear distinction between the two. It is easy to do so. For example:
“The dash-dash broken lines show portions of the [title of article] that form no part of the claimed design. The dash-dot broken lines show environment to the [title of article] and form no part of the claimed design.”
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
