Common Rejections In General
1. Improperly including a broken line statement when no broken lines exist in the drawing figures.
If the drawing figures have no broken lines, then a broken line statement should not be included. This sometime happens when drawing figures containing broken lines are cancelled during prosecution and the original broken line statement is not removed. See 29/719,100.
2. Improperly failing to include a broken line statement when there are broken lines in the drawing figures.
If 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 29/694,984.
3. Failing to properly place the broken line statement between the figure descriptions and the claim.
Broken line statements are feature descriptions. According to 37 CFR 1.154, feature descriptions, such as broken line statements, should be placed after the figure descriptions and before the claim statement. See 29/683,551.
4. Failing to expressly identify what is represented by the broken lines and failing to define their relationship to the claimed design.
The two key requirements of a proper broken line statement are expressly identifying what the broken lines represent and defining the relationship to the claimed design. Express identification means, for example, stating that the broken lines represent portions of the [title of article], environment to the [title of article], boundaries of the claim, stitching, fold lines, etc. Defining the relationship to the claimed design means stating that the identified broken lines form no part of the claimed design. These requirements are the reason it is improper to identify broken lines simply as “environment” or as “unclaimed subject matter.” See 29/722,879.
5. Assigning multiple meanings to a single broken line type.
The broken line statement cannot identify a single broken line style as having multiple meanings such as portions of the [title] that form no part of the claimed design and unclaimed boundaries and/or environment. 29/738,155. For example, the statement “[t]he broken lines in the drawing views represent unclaimed portions of a [title], which are included for the purpose of illustrating unclaimed environment only, and forms no part of the claimed design” was improper because it describes “the entirety of the broken line disclosure as having multiple meanings, without specifying which elements of the drawings depict ‘environment’ or ‘portions’ that form no part of the claimed design.” Id. This was considered “contradictory because a single defined broken line type cannot have more than one meaning” and “[s]uch indefinite disclosure confuses the scope and appearance of the claim.” Id.
6. Stating that the claimed design is shown in solid lines.
Since it is inferred that the claimed design is shown in solid lines, it is not necessary to state so in a feature statement. See 29/638,654.
7. Using redundant language in the broken line statement.
For example, in the statement “[t]he broken line showing is included for the purpose of illustrating unclaimed subject matter and forms no part of the claimed design,” the term “unclaimed” and the phrase “and forms no part of the claimed design” are redundant. Statement was corrected to “[t]he broken lines illustrate portions of the golf bag that form part of the claimed design.” See 29/705,715.
8. Improperly not including the title of the article in the broken line statement.
Some examiners will issue an objection or rejection if the generic term “article” is used instead of the exact title of the article. See 29/731,713. For example, “[t]he broken lines show portions of the article that form no part of the claimed design” corrected to “[t]he broken lines show portions of the [title] that form no part of the claimed design.”
9. Improper use of the phrase “in which the design is embodied.”
The statement “[t]he broken lines shown in the drawings depict portions of the [title of article] in which the design is embodied that form no part of the claimed design” rejected because it can be interpreted that the design is embodied in broken line features. Statement corrected to “[t]he broken lines depict portions of the [title of article] that form no part of the claimed design.” See 29/767,986.
10. Not following conventional use of dash-dash broken lines and dash-dot broken lines.
Although applicants are granted flexibility in the type of broken lines used and the language used to describe them, some examiners remind applicants that even dashed broken lines normally represent unclaimed subject matter and dashed-dot lines normally show boundary lines of the claimed design. See 29/795,070.
11. Listing the wrong article title in the broken line statement.
The broken line statement must contain the correct title to the article. See 29/715,708.
12. Improperly stating that broken lines form no part of the claimed design rather than stating that broken lines show portions of the [title] that form no part of the claimed design.
The original statement “[t]he broken lines in FIGS. 1-7 illustrating certain portions of the scooter form no part of the claimed design” amended to “[t]he broken lines are for the purpose of illustrating portions of the [title] that form no part of the claimed design.” See 29/711,117.
13. Using broken lines to show internal parts.
Broken lines may not be used to show internal parts of an article. See MPEP 1503.02 (III) (“Broken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials.”).
14. Using both thin and thick broken lines without distinguishing between the two in the broken line statement.
If both thin and thick broken lines are used, then the broken line statement must distinguish between them. See 29/652,387.
15. Improperly referring to broken lines as phantom lines.
The term “phantom lines” has no meaning in current United States design practice or in the MPEP. See 35/510,164. Using the term “phantom” confusingly suggests they represent something that is not there. See 29/743,001.
16. Improperly adding unnecessary language.
Adding unnecessary language can be improper. For example, the phrase “[i]n the current numbered figures” was considered unnecessary. See 29/763,702. The phrase “[i]n the drawings” was considered unnecessary. See 29/750,730. The statement “[t]he bounds of the claimed design are defined with dot-dashed boundary lines when the boundary does not exist in reality in the article embodying the design” amended to “[t]he dot-dashed broken lines represent boundary lines and do not form part of the claimed design.” See 29/722,879.
17. Improperly stating that broken lines show portions of the article not claimed.
The statement “[t]he broken lines show portions of the article not claimed and form no part of the claimed design” could be interpreted to mean that only portions of the broken line subject matter, rather than all the broken lines, are not claimed. Therefore, some of the broken lines could be claimed according to this improper description. See 29/730,401.
18. Improperly and unnecessarily referring to the article twice
The statement “[t]he broken lines in the drawings of the automobile wheel are for the showing portions of the article and form no part of the claimed design” unnecessarily contains both the terms automobile wheel and article. Proper form is “[t]he broken lines in the drawings illustrate portions of the automobile wheel that form no part of the claimed design.” See 29/767,132.
19. Improperly referring to the entire article rather than portions of an article.
The statement “[t]he broken lines in the drawings of the automobile wheel are for showing portions of the article and form no part of the claimed design” suggests that that the entire wheel is shown in broken lines. A suggested proper form is “[t]he broken lines in the drawings illustrate portions of the automobile wheel that form no part of the claimed design.” See 29/767,132.
20. Improperly including the phrase “portions of the [title] shown in broken lines.”
The statement “[p]ortions of the [title] shown in broken lines form no part of the claimed design” 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. See 29/750,386.
21. Referring to Enlarged Portions
Proper form: The dot-dash broken lines represent the boundaries of the enlarged portions and form no part of the claimed design. See 29/791,249.
22. Improperly describing what is not shown in the drawings as forming no part of the claimed design.
The statement “[a]ny surfaces of the design not shown, including interior surfaces and any surfaces shown in broken lines, form no part of the claimed invention,” is both unnecessary and improper. It is not necessary to describe what is not shown in the drawings as forming no part of the claim. Further, there are no apparent interior surfaces or surfaces of the design that are shown in broken line in the drawings. Therefore, the statement suggests that claimed portions of the design are intended to be unclaimed subject matter, which is impermissible in a design patent application. MPEP § 1503.0l(b)(l). See 29/774,360.
23. Improperly describing the broken lines as being “unclaimed portions” or “unclaimed subject matter.”
The statement “[t]he broken lines shown in the drawings represent visible environmental structure or unclaimed portions of the structure of the adjustable crank arm, and form no part of the claimed design” was considered improper because it misrepresents the nature of a design claim. “The design is what is claimed, and everything outside of that pertains to portions of the article of manufacture or environment which are excluded from being part of the claimed design. The design is a unitary thing and all of its portions are material, thus there can be no ‘unclaimed’ or ‘disclaimed’ parts of the claimed design.” 29/704,052.
The statement “[t]he dash-dot lines indicate unclaimed portions of the article and form no part of the claimed design” was considered improper. “In a design patent, the claim is directed to the “design for” an article of manufacture. A design doesn’t have any claimed or unclaimed portions; an article does not have any claimed or unclaimed portions. What is shown in broken lines is excluded from the claim, or “forms no part of the claimed design.” 29/753,786.
Suggested proper form: The broken lines show portions of the Adjustable Crank Arm that form no part of the claimed design.
24. Improperly including a statement that the broken lines are not to indicate the relative importance of parts of a design.
Since broken lines are not permitted to be used to indicate the relative importance of parts of the design per MPEP 1503.02 (III), including language in the statement regarding broken lines not indicating relative importance is unnecessary and must be canceled. See 29/715,940.
25. Improperly identifying broken lines as representing unclaimed subject matter.
The statement “[t]he broken lines shown represent unclaimed subject matter and form no part of the claimed design” does not explicitly state what the broken lines represent in the drawings. A suggested proper form is the broken lines show portions of the [title of article] that form no part of the claimed design.
26. Improperly describing the broken line portions as being used to “illustrate unclaimed environment.”
“The drawings are the illustration of the claim, in essence, the entire drawing disclosure is for illustrative purposes, as it illustrates the claim. Therefore, a description of a discrete portion – in this case, broken line subject matter – of that drawing as being for illustrative purposes does not dearly describe or clarify the meaning of that portion. 37 CFR 1.152 and MPEP § 1503.02, subsection III.” 29/779,701.
27. Improperly using the term “and” instead of “that.”
The statement “[t]he broken lines are included for the purpose of illustrating environment and form no part of the claimed design” amended to “the broken lines are included for the purpose of illustrating portions of the [title of article] that form no part of the claimed design.” In the amendment, the identification of the broken lines was clarified and the word “and” was changed to “that.” 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 of article] shown by the broken lines form no part of the claimed design. By the using the word “that,” it is clear that the portions of the [title of article] shown by the broken lines form no part of the claimed design. See 29/762,616; see also 29/753,786.
28. Improperly using the term “which” instead of “that.”
The statement “[t]he broken lines represent stitching lines which form part of the claimed design” amended to “the broken lines represent stitching lines that form part of the claimed design.” Since broken line descriptions should expressly identify the purpose of the broken lines in addition to defining their relationship to the claimed design, the nonrestrictive clause “which” should be amended to the restrictive clause “that” for grammatical clarity. A restrictive clause modifies the noun that precedes it in an essential way, whereas a nonrestrictive clause describes a noun in a nonessential way. Since the phrases “form part of the claimed design” and “form no part of the claimed design” are essential to the meaning of a broken line statement, the relative pronoun “that” should be used to begin the clause. See 29/752,343.
29. Improperly describing boundary lines as portions of the [title] that do not form part of the claimed design
When the broken lines surround the claimed subject matter and the area outside the broken lines is not claimed, the broken lines typically represent unclaimed boundaries and should not be described as showing portions of the [title] that do not form part of the claimed design. See 29/741,917.
Common Rejections in GUI Design Patent Applications
In a Computer-Generated Icon-type design, the broken line subject matter illustrates any or all of three distinct features: (1) the environment of the design, for example, a mobile or electronic device; (2) the article of manufacture, which is typically a display screen or panel that is embodied in the environment if present; and (3) the graphical user interface (GUI), which is the design itself and serves as ornamentation of the article of manufacture.
These three portions should all be appropriately identified in a broken line statement. This ensures that the design complies with the article of manufacture requirement of 35 U.S.C. § 171 in identifying that such an article exists in the drawing(s) and is clearly understood as such.
When dashed broken lines illustrate portions of the graphical user interface that form no part of the claimed design, a suggested broken line statement is “[t]he dashed broken lines illustrate portions of the graphical user interface that form no part of the claimed design.”
Common Rejections Figures Containing Broken Lines
1. Broken line segments uneven in length with insufficient spacing.
It should be obvious, at a glance, which lines are solid and which lines are broken even after the drawings are reduced in size for publication. The scope of the claim may be misinterpreted if the broken lines appear as solid lines or begin to merge into solid lines. Broken lines should be a lighter weight and employ an even, consistent rhythm in the breaks, even on curves and angles. Extra care is required in areas of tight detail due to the tendency of broken lines and dashes to merge into solid lines when reduced for publication. See 29/649,604. The dashes should be longer than the spaces in between. See 29/815,223.
Broken lines should appear as short, light, and even in length, thickness, and spacing. Broken lines showing unclaimed features should contrast in appearance to the solid lines of the claimed design and tightly spaced broken lines may give the appearance of solid lines. See 29/763,702. The line weight must not be too light and must reproduce well on a printed patent. See 29/753,130.
2. Broken lines merging into solid lines.
When broken lines merge into solid lines, confusion is created as to which lines are broken and which lines are solid. This in turn creates confusion as what areas are claimed and what areas are not claimed. See 29/840,48.
3. Showing broken lines inconsistently in the drawings.
The broken lines must be shown consistently in the drawing figures. This includes different styles of broken lines such as dash-dash and dash-dot lines. See 29/795,070. When broken lines are shown inconsistently, the scope of the claim is unclear as it cannot be determined what is claimed and whether certain features are portions of the [title], unclaimed environment to the [title], unclaimed boundaries, or claimed or unclaimed surface indicia. See 29/726,886.
4. Including shading within broken lines in line drawings.
In line drawings, surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim. See 29/723,447. However, in photographs (including computer generated images), an area may be disclaimed by changing the tonal value of the unclaimed areas to a lighter tone and separating the claimed and unclaimed portions with broken lines. The contrast in appearance between the claimed and unclaimed areas must be absolutely clear. See 29/739,248.
5. Using broken lines to show the relationship between two parts of the claimed design.
Broken lines may not be used to show the relationship between two parts of the claimed design. See 29/737,679.
6. Improperly obscuring the claimed design with superimposed broken lines illustrating environment to the design.
“Where superimposed broken lines showing environmental structure obscure the full line disclosure of the claimed design, a separate figure showing the broken lines must be included in the drawing in addition to the figures showing only claimed subject matter, 35 U.S.C. 112(a) MPEP 1503.2, subsection III. See 29/766,904; see also 29/724,967.
7. Improperly using legends and arrows to identify claimed and unclaimed portions of the design
Unapproved legends with arrows are not allowed in design drawings. See 37 C.F.R. 1.84(0). The legends “Wine bottle” and “The claimed design” and the arrows are improper. It is understood in design patents that solid lines are used to depict the claimed design and that broken lines may depict structures that form no part of the claimed design.
8. Improperly circling an enlarged area with a solid line instead of a broken line
Since solid lines customarily depict claimed areas, when a circle is used to show the boundary of an enlarged area, the circle should be placed in broken lines (preferably dash-dot lines). See 29/713,712.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
