1. Necessity of a Broken Line Statement
MPEP § 1503.02 (III) entitled “Broken Lines” states “[u]nclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof.” If the drawing figures contain broken lines and a broken line statement is not included, a typical rejection will state: “[i]f the drawing figures contain broken lines, then a broken line statement must be included that defines their use such as, portions of the article that form no part of the claimed design, environment to the article, boundaries, stitching, folds lines, etc.” See, e.g., 29/694,984.
The case law is not as clear on the issue. In Bernardo Footwear, L.L.C. v. Fortune Dynamics, Inc., No. 07-CV-0963, 2007 U.S. Dist. LEXIS 93851, 2007 WL 4561476, at *1 (S.D. Tex. Dec. 24, 2007), when broken lines were included in the drawing figures and a broken line statement was not included, the broken lines were interpreted as stitching that was part of the claimed design. However, in Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 U.S. Dist. LEXIS 105125, at *26 (N.D. Cal. July 27, 2012), the court construed the broken lines as forming no part of the claimed design even without a broken line statement. The court reasoned that there was “no reasonable alternative interpretation of the broken lines” and the prosecution history established that the broken lines were intended to be disclaimed, thereby satisfying the public notice function regarding the meaning of broken lines.
The better practice here is to always include a broken line statement when broken lines are included in the drawing figures. A properly drafted broken line statement will eliminate any misunderstanding and could save a substantial amount in attorney fees if the design patent is enforced and the meaning of the broken lines is disputed.
2. What May be Shown by Broken Lines
Broken lines may be used 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.
3. What May Not be Shown by Broken Lines
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.
4. Avoiding New Matter Rejections
New matter is subject matter that has no support in the original specification, drawings, or claim. See MPEP § 1504.04(B), ¶1. With a few exceptions, including those discussed below, any changes made to the drawings or specification must have antecedent basis in the original disclosure. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121 (f).
Converting solid lines to broken lines and vice versa is not considered new matter. See MPEP § 1504.04(B), ¶6. Additionally, changing the style of broken lines, e.g., dash-dash to dash-dot lines is not considered new matter. See 29/640,103. However, completely removing solid lines or broken lines adds new matter and is prohibited. See 29/720,157; 29/689,654. Further, changing the scope of a design by describing broken lines as something else can be new matter. For example, describing broken lines as not forming part of the claim and then changing the description to stitching can be considered new matter. See 29/716,114. SPLIT: Finally, although solid lines can be converted to broken lines, some examiners state contour lines cannot be converted to broken lines. 29/836,503. Other examiners allow contour lines to be converted to broken lines. 29/830,007; 29/696,665.
SPLIT: Some examiners allow or require that shading and surface details within broken lines on a computer generated image be removed or whited out. See 35/509,207. Other examiners consider the complete removal of surface features to be new matter and require the surface features within broken lines to be lightened in tone to reflect they are not claimed. See 29/738,787.
It can be permissible to add new broken lines in the following circumstances:
(1)) SPLIT: Some examiners will allow broken lines to be added as unclaimed boundary next to a solid line. See 35/509,472, 29/665,306, 29/732,326, 29/757,398, 29/731,941. Other examiners will not and consider the addition of the boundary to be new matter. See 29/745,401.
Adding the dot-dash boundary line in the amended Fig. 2
was considered new matter in 29/745,401
(2) removing shade lines from broken line areas, see MPEP 1503.02 III (“surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim”); 29/756,970 (“Applicant must remove the surface shade lines from all unclaimed portions of the design”);
(3) adding shade lines to indicate that a surface is claimed, see 29/778,901, 29/724,967;
(4) adding shade lines to clarify contouring, 29/771,231, 29/724,967 (However, there must be antecedent basis for the new contour lines or they are new matter, 29/800,889, 29/743,438, because “the addition of depth or contour that cannot be confirmed in the original disclosure may constitute new matter, which is improper,” 29/443,679;
(5) adding shade lines to indicate that a claimed surface is transparent or opaque – if a surface is transparent, then the surface that can be seen through the transparent surface should have surface shade lines, 29/658,358;
(6) adding surface shading to indicate that the claimed design extends under unclaimed environment, see 29/736,854.
Note that views can be cancelled with incurring a new matter rejection. See 29/732,326; 29/802,220.
5. Stitching
Stitching is shown by broken lines. Although a court has interpreted broken lines as claimed stitching without a broken line statement, see Bernardo Footwear, supra, the better practice is to identify the broken lines as being stitching. When there are multiple meanings to broken lines in the drawing figures, then the stitching should be described.
Despite Bernardo Footwear, the better practice is to always include stitching in the broken line statement because stitching can be claimed or unclaimed. See 29/734,076. Without a broken line statement, it is not clear whether stitching is claimed. See 29/727,270.
6. Properly Describing Boundaries and Surrounding Areas
If broken lines are described as representing the boundaries of the claim, then it must be made clear either in the drawings or broken line statement precisely what the scope of the claim is. An understanding of the meaning of broken lines is arrived at from the use of surface shading in the views, the language utilized by applicant in the broken line statement, and the knowledge of an ordinary designer in the art. See 29/724,967. For example, if a broken line boundary exists near a solid line, then it can be unclear whether the space in between the solid and broken line is claimed. If it is intended to be claimed, then appropriate surface shade lines can be placed in the area to clarify that it is claimed. If it is not intended to be claimed, then another broken line can be placed immediately adjacent to the solid line. See 29/751,952. Alternatively, language can be included in the broken line statement that clarifies the scope of the claim. For example, “the unshaded surfaces between the solid lines and broken line boundaries form no part of the claimed design.”
One way to indicate that the space between two broken lines is claimed is to extend surface shading through the broken lines (thereby disclaiming only each singular broken line rather than the portion between the broken lines). See 29/760,833.
7. Enlarged Areas
Broken lines can be used to represent the boundaries of enlarged views. When used in this way, a proper broken line statement should be included such as:
(1) The broken lines represent the boundaries of the enlarged partial views of Figs. 8 & 9. See 29/749,096;
(2) The dash dot dash lines in FIG. 2 and FIG. 9 are for the purpose of depicting areas of enlargement to show details and form no part of the claim. See 29/761,212;
(3) The dash-dash broken line circles of Figs. 3, 7, 8, 9, 12, 16, 17, and 18 depict the limits of the enlarged views and form no part of the claimed design. The dash-dash lead lines in Figs. 3, 7, 12, and 16 labeled 8, 9, 17, and 18 respectively indicate the areas from which the enlargements in Figs. 3, 7, 12, and 16 are taken and form no part of the claimed design. See 29/725,019.
8. Sectional Views
Sectional views showing only internal construction or functional features are not necessary and should not be included in the drawing figures. However, a sectional view may be included to show or clarify the exact contour or configuration of the exterior surface of a claimed design. See MPEP 1503.02 (I).
Sectional hatch lines that do not represent claimed portions of the design should be shown with broken lines. See 29/737,088. A suggested broken line statement is “[t]he broken lines in the sectional view of Fig. [ ] show cross-hatched internal regions of the [title] that form no part of the claimed design.” Compare the The plane on which a sectional view is taken should be shown on the view from which the section is cut by a broken line. See 37 C.F.R. 1.84. When broken line arrows are used to designate a sectional designation, they should be described. For example, “[i]n Fig. 2, the broken line arrows represent a sectional designation that forms no part of the claim.” 29/743,788; “[i]n Fig. 2, the dot dash dot broken lines that denote the direction of the cross sectional view form no part of the claim.” 29/721,677.
9. Matters Inferred
Certain matters are inferred, and it is not necessary to include language that describes the inferred matter. For example, it is inferred that solid lines represent the claimed design, so it is not necessary to include a statement to that effect. See 29/638,654. It also is inferred that a claim extends to the boundary line but does not include the boundary line. See MPEP 1503.02 (III) (“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.”).
10. Broken Line Shading
Broken lines should not be used for shading to illustrate the three-dimensional configuration of claimed portions of the design. See 29/830,007; 29/692,053.
11. Broadening Statements Not Permitted
“The statement ‘Any combination or sub-combinations of features of the filter cartridge embodiments illustrated within the drawings of the application and/or in any of the applications incorporated by reference herein, whether in solid lines or in broken lines, is within the scope of the designs conceived by the inventors’ is a broadening statement, which is not permitted.” 29/713,701.
12. Indefinite Language Not Permitted
In the statement “[f]eatures showing in dashed line form no part of the claimed design, although in some embodiments one or more features shown in dashed line may form part of the claimed invention,” the use of the indefinite language “although” and “may” removes the clarity as to which portions are included in the claim, thereby making the scope of the claim not enabled. See 29/735,026.
13. International Applications
International design applications may be filed under the Hague Agreement that designate the United States. 37 CFR 1.1067 provides that statements are permitted in the specification that indicate “the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented.” In addition, Administrative Instruction 403 permits matter for which protection is not sought to be shown in the description and/or by means of broken or dotted lines or coloring. The specification may include statements explaining that protection is not sought for certain features shown. When protection is not sought for portions of subject matter shown, “applicants are strongly encouraged to indicate such subject matter by means of broken lines (or coloring) and include a statement in the specification explaining the meaning of the broken lines (or coloring).” 37 CFR 1.1067 (emphasis in original). Including such a statement “may help to avoid uncertainty as to the scope of the claimed design.” MPEP 2920.05(c).
Describing broken lines only as “indicat[ing] portions of the article that form no part of the claimed design,” does not identify the purpose of all the broken lines shown. The broken line statement should adequately describe what the broken lines in the drawings illustrate, as required. See MPEP § 2920.04(a), subsection II. “The text must state that the broken lines illustrate either portions of the article of manufacture that are not included in the claim, environmental structure forming no part of the claim, or boundaries of the article that form no part of the claimed design.” 35/512,981.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
