Design Patent ProGuide – Broken Line Statements

By Robert G. Oake, Jr. Updated September 30, 2026.

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Contents

Quick Start Guide

DO

Do expressly identify what the broken lines represent. Broken line statements should clearly state whether the broken lines depict portions of the article, environment to the article, boundaries, or other identified subject matter such as stitching or fold lines, so that claim scope is unambiguous.

Do state that broken lines form no part of the claimed design. Use clear, affirmative language confirming that the broken-line subject matter is excluded from the claim.

Do ensure the broken line statement is consistent with the drawings. The written statement should accurately reflect how broken lines are actually used in the figures; mismatches routinely trigger objections.

Do place the broken line statement in the proper location. Put it in the FEATURE DESCRIPTION section, after the figure descriptions and before the claim. That is the default location under 37 C.F.R. § 1.154(b).

Do use standardized, examiner-accepted phrasing where possible. Conventional formulations reduce the likelihood of formal objections and unnecessary examiner scrutiny.

Do verify that broken lines do not introduce ambiguity about claim boundaries. If broken lines appear to define edges or contours, the statement should clarify their non-claiming purpose.

Do confirm that any amendment involving broken lines is fully supported by the originally filed drawings. Introducing or converting lines without original support risks new matter rejections.

Do reassess broken line statements after any drawing amendment. Any change to line treatment requires a corresponding review of the broken line statement for accuracy and completeness.

Do treat broken line statements as substantive, not boilerplate. Courts and examiners rely on these statements to determine claim scope; careless drafting can have lasting effects.

Do distinguish between ornamental stitching and structural stitching and select line styles accordingly.

Do consider whether broken lines are necessary at all; in some cases omission of unclaimed features is preferable.

Do verify that boundary lines define only the claimed design and do not create unexplained negative space.

Do ensure that any feature shown in broken lines in one view is shown in broken lines in every view in which it appears.

DON’T

Don’t place broken line statements in the claim. The claim must remain free of descriptive or explanatory text regarding broken lines.

Don’t put the general broken line statement in the preamble or the figure descriptions. Examiners commonly object to misplaced statements. Figure-specific language is fine where a line convention appears in only one figure.

Don’t use vague or conclusory language. Statements such as “broken lines are for illustration only” without specifying what they depict are insufficient.

Don’t assume broken lines automatically exclude subject matter without explanation. Examiners expect an explicit statement identifying what is not claimed and why.

Don’t introduce new broken lines during prosecution without careful analysis. Adding broken lines to overcome prior art may be construed as surrendering claim scope.

Don’t convert solid lines to broken lines without considering the consequences. Such conversions can narrow the claimed design and can raise written description, priority, disclaimer, and estoppel issues.

Don’t rely on “for clarity” explanations if the substantive effect is narrowing. Courts evaluate substance over form; the stated reason does not control the legal effect.

Don’t leave residual or contradictory broken line statements after amendments. Conflicting descriptions undermine claim clarity and invite additional objections.

Don’t use broken lines to disguise functional disclaimers. Broken lines may exclude subject matter, but they cannot be used to reframe functional features improperly.

Don’t treat broken line practice as merely formal or stylistic. Broken line usage directly affects claim scope, enforcement, and validity.

Don’t use broken lines to depict optional features or alternative embodiments.

Don’t rely on broken lines as a substitute for properly cropping views.

Don’t assume examiner preferences are uniform across art units; be prepared to justify broken line treatment.

Don’t apply surface shading to subject matter shown in broken lines. The MPEP says shading should not be used there, to avoid confusion as to the scope of the claim.

1. Introduction and Theory

The theory underlying broken line practice in design patent prosecution is relatively simple. Broken lines typically show portions of an article that form no part of the claimed design, unclaimed environment to the article, or boundaries of the claimed design. Broken lines also can represent stitching and fold lines. Despite these relatively simple concepts, numerous objections and rejections continue to issue over broken line statements in design patent applications. These objections and rejections often result from misunderstandings by design patent applicants and the confusion over broken line principles.

How to read this ProGuide. The legal standard for broken lines is clarity. Broken lines may mean different things in different circumstances, and in each case it must be made clear what they mean. In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967). A design claim is indefinite under 35 U.S.C. § 112 only if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure. In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018).

The Rules in Section 3 and the recommended forms in Section 2 are practice rules drawn from the MPEP, from USPTO practice, and from the prosecution examples in Section 4. They are intended to avoid objections and reduce later claim-scope disputes. A departure from a practice rule does not necessarily establish a legal defect; the drawings, the statement, and the prosecution record must be evaluated together.

Note: This ProGuide is subject to certain limitations, which are set forth in Appendix 3 of this document.

 

When broken lines are used, the drawings and specification should make their purpose and their relationship to the claimed design clear. A concise broken line statement is ordinarily the best way to do so, and the MPEP states that unclaimed subject matter must be described as forming no part of the claimed design. MPEP § 1503.02, subsection III. The recommended forms below are commonly accepted formulations. Equivalent language may be appropriate if it clearly identifies the broken-line subject matter and leaves no ambiguity about claim scope.

 

2.1.1 When broken lines show portions of the [title] that form no part of the claimed design: The broken lines show portions of the [title] that form no part of the claimed design.

2.1.2 When broken lines show environment to the article and form no part of the claimed design: The broken lines show environment to the [title] and form no part of the claimed design.

2.1.3 When the broken lines represent boundaries to the claim: The broken lines show boundaries to the claim and form no part of the claimed design.

2.1.4 When equal-length broken lines show portions of the article and a specific figure shows environment: The equal-length broken lines depict portions of the [title] that form no part of the claimed design. In Fig. [X], the equal-length broken lines depict [describe environment, e.g., a leg and foot] that form no part of the claimed design.

2.2 Drafting Note on Grammar, Brevity, and Word Choice

A typical broken line statement begins with a subject noun phrase (The broken lines), a transitive verb (show), a direct object (portions), and a prepositional phrase (of the [title]) that modifies the direct object. This portion of the sentence identifies what is represented by the broken lines. The statement then typically includes a restrictive clause (that form no part of the claimed design) that begins with a relative pronoun (that). Alternatively, the statement can include language that begins with a conjunction (and). This portion of the sentence defines the relationship of the broken lines to the claimed design.

 

Many broken line statements contain verbs other than “show.” For example, the verbs “illustrate, depict, represent, indicate, and denote” often are used. Any of these verbs are acceptable. Some advantages of using the verb “show” are that it is a short, simple word and is similar to the word “shown,” as used in the claim statements “as shown,” or “as shown and described.”

 

Broken line statements often include the prepositional phrase “in the drawings,” or “in the drawing figures” after the subject noun phrase “the broken lines.” This phrase is unnecessary unless needed to identify a broken line in a particular drawing figure, such as “the broken lines in Fig. 2 show environment to the [title] and form no part of the claimed design.”

 

The relative pronoun “that” is sometimes replaced with the relative pronoun “which.” “That” is preferred because the clause “that form no part of the claimed design” is a restrictive clause that is essential to the meaning of the broken line statement. The use of “which” can indicate that the clause is nonrestrictive, or nonessential to the meaning of the statement, and examiners have objected to it. See Section 4.36.

 

The conjunction “and” is sometimes used instead of the relative pronoun “that” in a statement where the broken lines show portions of the [title]. Examiners have objected to this wording. See Section 4.35. When “and” is used, the statement can be interpreted to mean that only the broken lines form no part of the claimed design, and not that the portions of the [title] shown by the broken lines form no part of the claimed design. By using the relative pronoun “that,” it is clear the portions of the [title] shown by the broken lines form no part of the claimed design.

These are drafting preferences, not rules of law. The issue is not the isolated use of “that,” “which,” or “and.” It is whether the completed statement clearly communicates which subject matter forms no part of the claimed design. Examiner practice is not uniform: in some applications the Examiner’s own suggested statement used “which” or “and.” See Sections 4.14 and 4.35.

2.3 Drafting Note on Word Order

The selection and order of words used in a broken line statement are important. Although there is some flexibility in the language that can be chosen, the necessary precision of a broken line statement requires that the language and its sequencing convey a certain meaning. When words are not placed in the proper order, the meaning of the broken line statement can change. For example, a proper broken line statement would be “the broken lines show portions of the [title] that form no part of the claimed design.” When the word order is changed to “[p]ortions of the [title] shown in broken lines form no part of the claimed design,” an examiner or a court could read the statement to mean that only some of the subject matter shown in broken lines, rather than all of it, is unclaimed. Prefer wording that plainly links all of the broken-line subject matter to its claim-scope effect.

2.4 Foreign-Origin Caution Note

Broken line statement language from foreign filings often does not comply with U.S. practice. Common examples include the terms “phantom lines,” “for illustrative purposes only,” “illustrative of,” or “environmental structure” without reference to the article title. Some foreign-origin statements also omit the “that form no part of the claimed design” language or describe unclaimed features as “not part of the invention.” Any such language should be revised to conform to U.S. practice. See 37 C.F.R. § 1.154; MPEP § 1503.02, subsection III. The MPEP’s own sample statement for mixed boundary and environment lines includes the words “for illustrative purposes only,” but examiners have repeatedly objected to the phrase, including in a statement that also identified what the broken lines show. Leave it out. See Sections 4.1, 4.46 and 4.55.

2.5 Decision Tree

Does the drawing contain broken lines? 

├─ No → Don’t include a broken line statement 

└─ Yes → Do the broken lines show: 

├─ Parts of the article itself? → “portions of the [title]” 

├─ Separate objects/context? → “environment to the [title]” 

├─ Claim boundaries? → “boundaries” + clarify negative space if needed 

├─ Claimed stitching/folds? → Identify as forming part of the claimed design 

└─ Multiple types? → Separately describe each type

3. Rules for Broken Line Statements

These Rules are practice rules, as explained in Section 1. Rules 3.1 and 3.2 state the underlying standard. The remaining Rules are best practices drawn from the MPEP and from examiner objections. They are stated firmly because following them avoids most objections, and several restate MPEP guidance directly.

3.1 Clarity of Claim Scope

A broken line statement must clearly distinguish claimed from unclaimed subject matter so that the scope of the design is definite to the public, the examiner, and the courts. In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967); In re Zahn, 617 F.2d 261, 267-69 (C.C.P.A. 1980).

3.2 Consistency Between Drawings and Statement

The meaning assigned to each type of broken line should be consistent across all drawing figures and should match the written broken line statement.

3.3 Single Purpose per Broken Line Type

Each type of broken line (style, weight, or pattern) should have only one meaning in the application to prevent claim interpretation problems. In certain circumstances, broken lines may depict claimed stitching or fold lines, while other broken lines in the same drawings depict unclaimed subject matter or environment. In such cases, the broken line statement must clearly and separately identify each type and purpose of broken line, referencing the article title, location, or figure as needed, so the scope of the claim is definite. MPEP § 1503.02, subsection III (where broken lines serve different purposes, “the description must make a visual distinction between the two purposes”).

Rule 3.3(a) Stitching and Fold Lines

Stitching or fold lines should be described as such in the broken line statement. MPEP § 1503.01, subsection III. When stitching or fold lines depict functional or construction details only, they should be shown in broken lines and identified in the broken line statement as forming no part of the claimed design. Failure to clearly distinguish ornamental stitching from structural stitching may result in claim ambiguity or improper narrowing.

3.4 Prohibition on Claim Expansion

The broken line statement cannot be used to reserve rights to unclaimed subject matter; it may only disclaim subject matter or explain the purpose of broken lines.

3.5 Alignment with Title

The broken line statement should reference the article as titled in the application to maintain consistency in classification, search, and claim interpretation. Some examiners object to a generic term such as “article.” See Section 4.18.

3.6 Completeness Without Extraneous Detail

Every broken line use should be addressed in the statement, but the statement should not describe features not depicted in the drawings.

3.7 Express Identification Requirement

A broken line statement should expressly identify what the broken lines represent (e.g., portions of the article, environment to the article, boundaries, stitching, or fold lines). When broken lines cross the claimed design, the MPEP describes it as “critical” that the description explicitly identify their purpose so that the scope of the claim is clear. MPEP § 1503.02, subsection III.

3.8 Express Disclaimer Requirement

A broken line statement must expressly state that the subject matter shown in broken lines forms no part of the claimed design. MPEP § 1503.02, subsection III (“Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof.”).

3.9 Article Identification Requirement

A broken line statement should identify the broken-line subject matter by reference to the title of the article used in the application rather than by a generic term such as “article.” Examiners have objected to generic terms. See Sections 4.18 and 4.52.

3.10 Prohibition on Generic or Vague Descriptors

Broken line statements should not describe broken-line subject matter using vague or open-ended terms such as “features,” “elements,” “structure,” or “subject matter” without further identification.

3.11 Prohibition on Foreign-Origin Terminology

Broken line statements should not use “phantom lines” or “for illustrative purposes only,” and should not use “environmental structure” without proper identification tied to the article title. The MPEP’s own sample statement includes “for illustrative purposes only” alongside an express identification of each type of broken line, but examiners have objected to the phrase even when the statement also identified what the broken lines show (see Section 4.55). The phrase adds nothing to a statement, so leave it out.

3.12 Distinct Meaning Requirement for Multiple Broken Line Styles

If multiple broken line styles (e.g., dash-dash, dash-dot, thick vs. thin) appear in the drawings, the broken line statement must separately identify the purpose of each style. MPEP § 1503.02, subsection III.

Common Broken Line Styles: 

─ ─ ─ ─ (dash-dash or equal-length dashes) 

─ · ─ · (dash-dot) 

─ · · ─ (dash-dot-dot)

3.13 Boundary Line Identification Rule

When broken lines define the boundary of the claimed design, the broken line statement should identify them as boundaries and should not describe them as portions of the article. A broken-line boundary may be used when the boundary does not exist in reality in the article, and it is understood that the claimed design extends to the boundary but does not include it. MPEP § 1503.02, subsection III; In re Owens, 710 F.3d 1362, 1367 (Fed. Cir. 2013). Use a line style that is visually distinct from the broken lines used for unclaimed portions or environment, and explain the convention in the statement. Dot-dash lines are a common convention for boundaries, but the touchstone is a clear and consistent disclosure. A boundary added by amendment or in a continuation must be supported by the original disclosure. See Section 5.2.

3.14 Environment vs. Article Distinction Rule

Broken line statements should correctly distinguish between environmental subject matter and portions of the article itself. The MPEP uses “environment” broadly enough to include portions of the article that are not claimed. MPEP § 1503.02, subsection III. Examiners nonetheless have objected when a statement calls portions of the article “environmental structure” (see Section 4.53), so the distinction in Rule 3.14(a) remains the better practice. When the term “environment” is used, couple it with language tying it to the article, such as “environment to the [title],” to avoid ambiguity.

Rule 3.14(a) Distinguishing “Portions of the Article” from “Environment to the Article”

Portions of the article and environmental context should not be conflated. Use “portions of the [title]” when broken lines depict parts of the claimed article itself that are intentionally excluded from the claim. Use “environment to the [title]” when broken lines depict separate objects or contextual matter, such as a hand, stand, surface, background object, or adjacent article, that are not part of the article of manufacture. Mischaracterizing unclaimed portions of the article as “environment,” or vice versa, may result in ambiguity regarding claim scope and formal objection.

3.15 No Optionality or Variability Language

A broken line statement should not include language suggesting that broken-line features are optional, interchangeable, or subject to variation.

3.16 No Claim Broadening or Reservation Language

A broken line statement should not suggest that unshown variations, alternative configurations, or broader embodiments are within the scope of the claimed design.

3.17 Drawing–Statement Functional Match Requirement

The broken line statement should accurately describe the functional role of the broken lines as they appear in the drawings (e.g., boundary, environment, unclaimed portion), not merely acknowledge their presence.

3.18 No Use of Broken Lines to Cure Drawing Defects

A broken line statement cannot be used to cure ambiguity caused by merging, indistinct, or inconsistent line work in the drawings.

3.19 Appropriate Use of Boundary Lines

Boundary lines are appropriate when the claimed design is limited to a portion of an article and the boundary itself defines the extent of the claimed surface ornamentation or shape. Boundary lines are not appropriate to merely exclude features that could instead be omitted or shown in broken lines. Boundary lines may coexist with broken lines, but the function of each must be clear: boundary lines define claim limits, while broken lines disclaim unclaimed subject matter.

Example: For a design directed to a decorative pattern on a portion of a shoe upper, boundary lines appropriately define where the pattern begins and ends on the shoe surface. The shoe itself would be shown in broken lines as “portions of the [title].”

3.20 Negative Space Clarification for Boundary Lines

A special statement about negative space is not generally required just because a boundary line is present. When broken lines crossing the claimed design are defined as boundaries, it is understood that the area within them is not part of the claimed design. MPEP § 1503.02, subsection III. A clarifying statement may still be useful in an unusual figure where the space between a boundary and the solid-line design could be read either way.

3.21 Shading on Broken-Line Surfaces

Surface shading should not be used on unclaimed subject matter shown in broken lines, to avoid confusion as to the scope of the claim. MPEP § 1503.02, subsection III. If minimal shading is needed to convey the contour where claimed structure meets unclaimed structure, it should appear only on the solid-line (claimed) portions.

3.22 Multiple Identical Articles

A single claim may cover multiple articles or multiple parts if they make up a single entity of manufacture, such as a set, pair, or assembly, and the title should say so. MPEP § 1504.01(b). When the claim is directed to one article and another instance of the same article is shown only for context, such as a second earphone beside the claimed earphone, show the additional instance in broken lines and describe it as environment to the [title], not as portions of the [title]. See Section 4.6.

3.23 Hidden or Internal Features

Broken lines may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. 37 C.F.R. § 1.152; MPEP § 1503.02, subsection III. Broken lines show visible structure only.

3.24 Legibility and Spacing of Broken Lines in Corrected Drawings

When an applicant converts subject matter from solid lines to broken lines, the broken lines should remain legible, properly spaced, and no heavier than the solid lines. MPEP § 1503.02, subsection III. Crowded or indistinct broken lines may prompt an objection or, if the figures and specification do not convey the scope of the claimed design with reasonable certainty, may support a § 112 rejection or a later indefiniteness challenge. See In re Maatita, 900 F.3d 1369, 1375-77 (Fed. Cir. 2018). The conversion itself also changes what is shown as claimed, which raises the issues discussed in Section 5.2.

3.25 Use of the Phrase “as well as”

Prefer closed, direct identification of each type of broken line. Open-ended phrases such as “as well as” can leave unclear whether additional line types or purposes are intended, and examiners have objected to them. See Section 4.57.

4. Application of the Rules in Rejections and Objections

Many rejections to broken line statements are common and typically result from language choice that fails to satisfy the two basic requirements of precisely identifying what is represented by the broken lines and defining their relationship to the claimed design. Common rejections and recommended forms to overcome the rejections are set forth below.

Common patterns in the examples below include: (1) failing to identify the article by exact title, (2) using non-standard terminology like “illustrative purposes,” (3) failing to distinguish between multiple broken line types, and (4) omitting broken line statements entirely.

The examples below summarize objections and rejections made in particular applications and how they were resolved. Each example identifies the Office action and its date. Where the Applicant adopted wording the Examiner suggested, or the Examiner supplied the wording by examiner’s amendment, the example says so. Observations that are this guide’s own, rather than the Examiner’s, are labeled “Comment.” Entries labeled “Practice Point” are the guide’s drafting recommendations and do not report a particular application. The examples show how examiners apply broken line conventions; an objection in one application does not by itself establish a legal requirement, and examiner practice is not uniform.

4.1 Using the Phrase “For Illustrative Purposes Only”

Example: “The broken lines are for illustrative purposes only and form no part of the claimed design.”

Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.” Rule 3.7, Rule 3.8, Rule 3.10, Rule 3.11

4.2 Using the Term “Environmental” Without Further Description

Example: “The broken lines shown are environmental only and form no part of the claimed design.”

Recommended form (when broken lines depict parts of the article): “The broken lines show portions of the [title] that form no part of the claimed design.”

Recommended form (when broken lines depict separate contextual objects): “The broken lines show environment to the [title] and form no part of the claimed design.” Rule 3.7, Rule 3.8, Rule 3.14

4.3 Failing to Describe Multiple Broken-Line Types with Separate Meanings

Example: “The broken lines show environmental structure and boundaries and form no part of the claimed design.”

Recommended form: “The dash-dash broken lines show portions of the [title] that form no part of the claimed design. The dash-dot broken lines show boundaries and form no part of the claimed design.” Rule 3.3, Rule 3.12, Rule 3.13, Rule 3.17

4.4 Failing to State That the Broken Lines Form No Part of the Claimed Design

Example: “The dash-dot-dash broken lines in the drawings depict the boundaries of the claimed design.”

Recommended form: “The dash-dot-dash broken lines in the drawings depict boundaries of the claimed design and form no part of the claimed design.” Rule 3.8, Rule 3.13, Rule 3.19

4.5 Failing to Name the Article of Manufacture

Example: “The broken lines form no part of the claimed design” or “The broken lines show portions of the article that form no part of the claimed design.”

Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.” Rule 3.5, Rule 3.9

4.6 Failing to Describe the Purpose of All Broken Lines in the Drawings

Example (two earphones shown): “The broken lines in the drawings depict portions of the earphone with charging case that form no part of the claimed design.”

Recommended form: “The broken lines on the earphone and charging case depict portions of the earphone with charging case that form no part of the claimed design. In [figure], the broken lines showing an additional earphone depict environment to the earphone with charging case and form no part of the claimed design.” Rule 3.6, Rule 3.14, Rule 3.22

4.7 Using the Phrase “Illustrate Unclaimed Features”

Example: “The broken lines illustrate unclaimed features that form no part of the claimed design.”

Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.” Rule 3.7, Rule 3.8, Rule 3.10

4.8 Assigning Multiple Meanings Without Identifying Which Meaning Applies

Example: “The broken lines show unclaimed portions of a [title], which are included for the purpose of illustrating unclaimed environment only, and form no part of the claimed design.”

Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.” Rule 3.3, Rule 3.10, Rule 3.12

4.9 Describing Broken Lines as Both Portions of the Article and Environment

Example: “The broken lines show portions of the article in which the claimed design is embodied and/or for environment purposes only, but which form no part of the claimed design.”

Recommended forms (use the one that matches the drawings):
• “The broken lines show portions of the [title] that form no part of the claimed design.”
• “The broken lines show environment to the [title] and form no part of the claimed design.”
• “The dash-dash broken lines show portions of the [title] that form no part of the claimed design. The dash-dot broken lines show environment to the [title] and form no part of the claimed design.” Rule 3.3, Rule 3.12, Rule 3.14, Rule 3.17

4.10 Failing to Identify What the Broken Lines Represent and Failing to Define Their Claim Relationship

Example: “The broken lines show structure and environment.”

Recommended forms (use the one that matches the drawings):
• “The broken lines show portions of the [title] that form no part of the claimed design.”
• “The broken lines show environment to the [title] and form no part of the claimed design.”
• “The dash-dash broken lines show portions of the [title] that form no part of the claimed design. The dash-dot broken lines show environment to the [title] and form no part of the claimed design.” Rule 3.7, Rule 3.8, Rule 3.10, Rule 3.14

4.11 Broken-Line Statement Included When No Broken Lines Appear

In Application 29/719,100 (ProSearch file history pp. 6, 14, 38), an Office action mailed March 1, 2022 objected to the specification because “no broken lines are used in the drawing disclosure” and required cancellation of the statement “Where utilized, broken lines are used to illustrate features of the NASAL MASK … that form no part of the claimed design.” It required cancellation of the dash-dot boundary sentence for the same reason. The Applicant’s reply of June 1, 2022 amended the specification “as suggested in the office action,” and the Notice of Allowability stated that the specification objections had been overcome.

In Application 29/715,708 (ProSearch file history pp. 25, 40, 61, 64), the first Office action, mailed March 2, 2021, objected to a broken line statement because “There are no broken lines in the drawings as submitted.” The same action suggested converting certain features to broken lines and added, “If this is done, retain the current broken line statement.” The Applicant added broken lines and kept the statement, whose wording was later objected to (see Example 4.20).

Comment: Revisit the broken line statement whenever broken lines are added or removed. Conditional “where utilized” boilerplate can easily survive an election. Rule 3.2, Rule 3.6, Rule 3.17

4.12 Broken Lines Present Without Any Broken-Line Statement

In Application 29/694,984 (ProSearch file history pp. 66, 115, 134), the first Office action, mailed September 28, 2020, rejected the claim under 35 U.S.C. § 112(a) and (b) in part because “[b]roken lines have been used in the figures, but their meaning has not been described in the specification,” which “creates uncertainty regarding what is claimed and what is not claimed.” The Applicant’s reply added the Examiner’s suggested statement verbatim: “The broken lines in the drawings depict portions of the Reagent Container that form no part of the claimed design.”

In Application 29/814,804 (ProSearch file history pp. 19, 35, 36), an Office action mailed August 7, 2024 rejected the claim under 35 U.S.C. § 112(b) because the drawings showed “broken lines within the bounds of the claimed article, yet the broken lines are not described in the specification.” The Applicant adopted the Examiner’s suggested statement, “The broken lines depict portions of the Connector that form no part of the claimed design,” and changed the title from “Vacuum” to “Connector.” The application issued as U.S. Patent No. D1,078,430.

In Application 29/878,530 (ProSearch file history pp. 9, 24), a Non-Final Rejection mailed March 27, 2025 objected to the specification, stating that a broken line statement should be added “[i]n order to describe the purpose of the broken lines in the drawings.” The Applicant added the suggested statement but placed it before the figure descriptions; the Examiner moved it by examiner’s amendment in the Notice of Allowability to follow the figure descriptions and precede the claim. Rule 3.1, Rule 3.7, Rule 3.8

4.13 Broken-Line Statement Misplaced and Not Describing What the Broken Lines Show

In Application 29/683,551 (ProSearch file history pp. 2, 5), an Ex parte Quayle action mailed August 12, 2021 objected to the specification because the statement “The broken lines depicted in the drawing depict features that form no part of the claimed design” was placed incorrectly. The Examiner explained that “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.” The Examiner also stated that broken line statements “should clarify the meaning of the broken lines, i.e. portions of the article, environmental subject matter, boundaries of the claim, etc.” and recommended inserting, as its own paragraph immediately preceding the claim: “The broken lines depict portions of the article that form no part of the claimed design.”

The Applicant’s response is not in the available file history.

Comment: The objection had two parts, location and content. Moving the statement alone would not have answered the Examiner’s point that “features” does not say what the broken lines depict. Rule 3.6, Rule 3.7, Rule 3.17

4.14 “Unclaimed Subject Matter” Does Not Say What the Broken Lines Represent

In Application 29/722,879 (ProSearch file history pp. 5, 10, 21, 34, 35, 43), a Non-Final Rejection mailed September 6, 2022 objected to the specification because the broken line statement “does not explicitly state what the broken lines represent in the drawings and because it contains extraneous language.” The original statement read: “The broken lines shown represent unclaimed subject matter and form no part of the claimed design,” followed by two sentences explaining dot-dashed boundary lines. The Examiner supplied replacement text for the whole statement.

In its response dated October 13, 2022, the Applicant adopted the Examiner’s first sentence verbatim: “The broken lines in the figures are for the purpose of illustrating portions of the bench, which form no part of the claimed design.” It deleted the boundary sentences because it had converted the only dot-dash lines to broken lines in response to the § 112 rejection.

Comment: The original already stated the claim relationship; it lacked identification of the subject matter. The accepted text still uses “for the purpose of illustrating” and a nonrestrictive “which.” Rule 3.7, Rule 3.8, Rule 3.10, Rule 3.17

4.15 Single Broken-Line Style Assigned Two Meanings

In Application 29/738,155 (ProSearch file history pp. 9, 18, 25, 26), a Non-Final Rejection mailed October 25, 2021 objected to the specification and also rejected the claim under 35 U.S.C. § 112(a) and (b) because the broken line statement said the broken lines represented “unclaimed portions of a Portable Power Device” that were included “for the purpose of illustrating unclaimed environment only.” The Examiner stated: “This is contradictory because a single defined broken line type cannot have two meanings.” Noting that the broken lines “clearly depict portions of the power supply and not environment,” the Examiner suggested: “The broken lines in the drawings depict portions of the [title] that form no part of the claimed design.”

In its response dated January 25, 2022, the Applicant adopted the suggested form: “The broken lines in the drawings depict portions of the Power Supply that form no part of the claimed design.” The Final Rejection mailed February 28, 2022 stated that the § 112 rejection had been overcome and withdrawn. Rule 3.3, Rule 3.17

4.16 Solid-Line Claim Statement That Conflicted with Surface Shading

In Application 29/638,654 (ProSearch file history pp. 27, 32, 54, 55), a Non-Final Rejection mailed August 6, 2020 rejected the claim under 35 U.S.C. § 112(a) and (b) in part because the description “the ornamental design which is claimed is shown in solid lines in the drawings” conflicted with the drawings, “as the use of surface shading seems to indicate that the surfaces bound by the solid lines also form part of the claimed design.” The Examiner added that the statement was unnecessary because solid lines are understood to be claimed, and alternatively suggested removing the shading or claiming “those surfaces shown with line shading.”

In its reply filed November 5, 2020, the Applicant replaced the sentence with “The claim is directed to the solid line subject matter below the boundary lines and to the two solid edge portions between the front and top surfaces,” and separately defined its two broken line styles. The next Office action stated that the reply overcame all objections and the § 112 rejection.

Comment: The Examiner’s main concern was the conflict with shading, not redundancy alone. Rule 3.6, Rule 3.21

4.17 Redundant “Unclaimed” Wording and a Replacement That Dropped “Forms No Part”

In Application 29/705,715 (ProSearch file history pp. 1, 7, 17, 23, 39), a Non-Final Rejection mailed October 8, 2021 objected to the statement “The broken line showing is included for the purpose of illustrating unclaimed subject matter and forms no part of the claimed design.” The Examiner explained that “unclaimed is redundant in the context of the sentence because the broken lines are ultimately described as forming no part of the claim,” and that the statement did “not explicitly describe the meaning of the broken line subject matter.”

In its reply of February 8, 2022, the Applicant changed the title to “Apparel Pocket for Golf Bag” and amended the statement to “The broken lines illustrate portions of the golf bag that form environment structure for the claimed design.” Because the statement no longer described the broken lines “as forming no part of the claimed design,” the Examiner substituted, by examiner’s amendment in the Notice of Allowability accompanying the Notice of Allowance mailed April 6, 2022: “The broken lines showing portions of a golf bag illustrate environmental structure and forms no part of the claimed design.”

Comment: In this guide’s view, “unclaimed” also suggests a design has claimed and unclaimed parts (compare Example 4.31). Rule 3.6, Rule 3.10

4.18 Generic “Article” Used in Place of the Article Title

In Application 29/731,713 (ProSearch file history pp. 5, 8, 11, 42, 43), the issue arose in an examiner-initiated telephone interview on August 19, 2022, not in an Office action. The statement then of record, repeated within the figure descriptions, read: “The broken line showing of DISPENSER FOR PERSONAL CARE LIQUIDS is for the purpose of illustrating portions of the ‘article’ and forms no part of the claimed design.” The Examiner told the attorney that “the use of ‘article’ does not properly describe broken lines within the broken line statement.”

With the attorney’s agreement, the Examiner resolved the issue by examiner’s amendment in the Notice of Allowability accompanying the Notice of Allowance mailed September 1, 2022. It moved the statement out of the figure descriptions and substituted: “The broken lines show portions of the DISPENSER FOR PERSONAL CARE LIQUIDS that form no part of the claimed design.”

Comment: In this guide’s view, naming the titled article ties the feature description to the claim. Examiners are not uniform on this point; compare Example 4.13, where the Examiner recommended “portions of the article.” Rule 3.5, Rule 3.9

4.19 Improper Use of the Phrase “In Which the Design Is Embodied”

In Application 29/767,986 (ProSearch file history pp. 5, 6, 7, 9, 25, 30), a Non-Final Rejection mailed March 17, 2022 objected to the specification because the broken line statement described the broken lines as “portions of the game controller for mobile telephone in which the design is embodied that form no part of the claimed design.” The Examiner explained that this “can be interpreted as the design is embodied in broken line features” and suggested a statement without the phrase.

In its reply of June 17, 2022, the Applicant struck through “shown” and “in which the design is embodied,” amending the broken line statement “according to Examiner’s suggestion,” and leaving: “The broken lines in the drawings depict portions of the game controller for mobile telephone that form no part of the claimed design.” The Notice of Allowability stated that the specification objections had been overcome. Rule 3.1, Rule 3.10, Rule 3.17

4.20 Article Title Corrected in the Broken-Line Statement by Examiner’s Amendment

In Application 29/715,708 (ProSearch file history pp. 5, 6, 8, 14, 40), the Final Rejection mailed November 5, 2021 objected to the “illustrative purposes” wording of the broken line statement and recommended: “The broken lines depict portions of the water filter that form no part of the claimed design.” The Applicant adopted that wording. The Examiner later telephoned the attorney on May 20, 2022 because the statement “did not have the full title of the design article and the purpose of the dot dash dot broken lines was not specified.”

With the attorney’s agreement, the Examiner amended the statement “for greater clarity and proper form” by examiner’s amendment in the Notice of Allowability accompanying the Notice of Allowance mailed June 15, 2022. The new statement reads “The broken lines depict portions of the Water Filter Cartridge that form no part of the claimed design” and adds a sentence defining the dot dash dot line in FIG. 7 as the boundary of the claim.

Comment: The short title came from the Examiner’s own suggestion. Check suggested wording against the title and every line style before adopting it. Rule 3.5, Rule 3.9, Rule 3.13

4.21 Practice Point: Hidden Planes and Internal Parts

Do not use broken lines to depict internal parts, hidden planes, or surfaces that cannot be seen through opaque materials. 37 C.F.R. § 1.152; MPEP § 1503.02, subsection III.

If the drawings show concealed structure in broken lines, remove it or depict only visible surfaces. Rule 3.23

4.22 Thin and Thick Broken Lines Used Without Distinct Purposes

In Application 29/652,387 (ProSearch file history pp. 6, 20, 21, 38), a Non-Final Rejection mailed July 13, 2022 rejected the claim under 35 U.S.C. § 112(a) and (b) in part because “The broken lines are illustrated in two styles, one thicker, one thinner,” while the statement read: “The broken lines illustrate a mask and clip and environment, but form no part of the claimed design.” The Examiner explained that “two distinct styles of broken lines should not be used unless they are intended to distinguish different purposes.”

The Applicant filed a substitute specification adopting the Examiner’s suggested statement: “The broken lines illustrating a mask represent environment, and the broken lines illustrating a clip represent portions of the article that form no part of the claimed design.” It also amended the drawings so the “dashed lines are all of the same line width.” After further drawing changes, the Notice of Allowability stated that the objection and § 112 rejection had been overcome.

Comment: The cure removed the weight difference rather than assigning purposes by weight. Only the clip clause expressly says “form no part.” Rule 3.3, Rule 3.12, Rule 3.14, Rule 3.17

4.23 Improper Use of “Phantom” Terminology for Broken Lines

In Application 35/510,164 (ProSearch file history pp. 9, 23, 25, 31, 44), a Hague application, U.S. counsel added “Disclaimer: The phantom lines of the arcuate ribs form no part of the claimed design” in a response filed November 10, 2021; the specification as registered contained no such statement. A Final Rejection mailed December 3, 2021 objected that “[t]he term ‘phantom lines’ has no meaning in the current US design practice nor in the MPEP” and suggested a “broken lines show portions of the article” statement. A related § 112 rejection added that if the broken lines were converted to solid lines, the disclaimer must be removed. The Applicant’s response filed December 21, 2021, with replacement drawings, deleted the disclaimer rather than adopting the suggested statement, and the application was allowed.

In Application 29/743,001 (ProSearch file history pp. 3, 4), an Ex parte Quayle action mailed September 23, 2021 objected to the phrases “phantom for illustrative purposes only” and “illustrative purposes.” The Examiner stated that “phantom” “does not clearly define the broken lines, does not exactly identify what the broken lines are showing and suggest[s] that they are something that is not there,” and that “the entire drawing is illustrative in nature.” The Examiner suggested separate sentences for the beverage containers and for “portions of the beverage dispenser.” The Applicant’s response is not in the available file history. Rule 3.10, Rule 3.11

4.24 Unnecessary Language and Over-Explanation in the Broken Line Statement

In Application 29/763,702 (ProSearch file history pp. 6, 9, 36, 37), a Non-Final Rejection mailed April 13, 2022 objected that “in the current numbered figures” “is unclear and should be deleted for clarity,” that “phantom lines” was unclear, and that a sentence listing example broken-line features should be deleted “[f]or brevity.” In an amendment filed July 11, 2022, the Applicant adopted the Examiner’s suggested statement in substance: “Even dashed broken lines are used to illustrate features of the shoe which form no part of the claimed design.”

In Application 29/750,730 (ProSearch file history pp. 4, 29, 30), a Non-Final Rejection mailed October 5, 2021 objected that the lead-in “In the drawings:” was “unnecessary,” and, “for clarity and brevity,” replaced the explanation that faded portions “are set apart from the claimed portions by a broken line” with two short sentences. The Applicant’s response filed January 5, 2022 adopted those sentences, but its substitute specification still placed “In the drawings:” immediately before the broken line statement.

In Application 29/722,879 (ProSearch file history pp. 5, 10, 21, 34, 43), a Non-Final Rejection mailed September 6, 2022 objected that the statement did “not explicitly state what the broken lines represent” and “contain[ed] extraneous language.” The Examiner’s suggested statement dropped “unclaimed subject matter” and a sentence explaining that dot-dashed lines define bounds “when the boundary does not exist in reality.” The Applicant adopted the suggested first sentence and, having removed all dot-dash lines from the drawings, deleted the boundary language altogether. Rule 3.6, Rule 3.13, Rule 3.17

4.25 Ambiguity Created by “Portions of the Article Not Claimed”

In Application 29/730,401 (ProSearch file history pp. 2, 5), an Ex parte Quayle action mailed November 30, 2021 objected to the specification’s broken line description on two grounds. First, the broken lines “must be clearly described as illustrating portions of the actual article in which the design is embodied.” Second, the phrase “portions of the article not claimed” “could be construed to mean that only portions of the broken line subject matter, rather than all of the broken lines, are not claimed.” Citing MPEP 1503.02, III, the Examiner required amendment “[t]o avoid any unnecessary ambiguity” and suggested: “The broken lines show portions of the Fan that form no part of the claimed design.”

The Applicant’s response is not in the available file history, so the final wording cannot be confirmed from this record.

Comment: The suggested text cures both problems. It names the titled article, and it makes the broken lines themselves the subject of the sentence, so that everything shown in broken lines is excluded from the claim. Rule 3.1, Rule 3.7, Rule 3.8, Rule 3.17

4.26 Unnecessary Tautology from Naming the Article Twice

In Application 29/767,132 (ProSearch file history pp. 5, 6, 7, 15, 16, 23), a Non-Final Rejection mailed August 30, 2022 included an objection to the specification directed at the broken line statement: “The broken lines in the drawings of the automobile wheel are for showing portions of the article and form no part of the claimed design.” Among other points, the Examiner stated that “the wheel is the article and stating both in the same sentence is an unnecessary tautology,” and required the statement to read: “The broken lines in the drawings illustrate portions of the automobile wheel that form no part of the claimed design.”

The Applicant’s response of October 24, 2022 submitted only replacement drawings. The Examiner then entered the corrected statement by examiner’s amendment in the Notice of Allowability, which accompanied the Notice of Allowance mailed November 22, 2022. Besides removing the double reference, the corrected text replaced “are for showing” with “illustrate” and “and form” with “that form.” Rule 3.6, Rule 3.9

4.27 Referring to the Whole Article Rather Than “Portions”

In Application 29/767,132 (ProSearch file history pp. 6, 7, 11, 15, 16, 23), the same Non-Final Rejection (notification date August 30, 2022) objected that the broken line statement was “not entirely accurate.” The original statement did say “portions of the article,” but it described “the drawings of the automobile wheel.” The Examiner explained: “Such a statement suggests that the entire wheel is shown in broken lines. For accuracy and clarity, the broken lines should be explained as showing ‘portions of the wheel’ rather than merely the ‘wheel’.”

As in Example 4.26, the Applicant’s October 24, 2022 response addressed only the drawings. The Examiner entered the corrected statement by examiner’s amendment in the Notice of Allowability: “The broken lines in the drawings illustrate portions of the automobile wheel that form no part of the claimed design.” The Notice of Allowance was mailed November 22, 2022.

Comment: Wording that implies the entire article appears in broken lines can leave a reader unsure what remains claimed in solid lines. Tying the broken lines to “portions of the [title]” avoids that. Rule 3.7, Rule 3.10

4.28 Ambiguity Created by “Portions of the [Title] Shown in Broken Lines”

In Application 29/750,386 (ProSearch file history pp. 8, 16, 27), a Non-Final Rejection mailed March 16, 2022 objected to the specification’s broken line description, which read: “Portions of the CEILING FAN shown in broken lines form no part of the claimed design.” The Examiner explained that this wording “could be construed to mean that only portions of the broken line subject matter, rather than all of the broken lines, are not claimed,” and required amendment “[t]o avoid any unnecessary ambiguity,” citing MPEP 1503.02, III.

The Applicant adopted the Examiner’s suggested statement in its amendment of June 7, 2022: “The broken lines illustrate portions of the ceiling fan that form no part of the claimed design.” A Notice of Allowance was mailed July 22, 2022.

Comment: The same Examiner raised the same objection in Application 29/730,401 (Example 4.25). In the guide’s view, the lesson is to make the broken lines the subject of the sentence, so the exclusion reaches everything shown in broken lines. Rule 3.1, Rule 3.7, Rule 3.17

4.29 Adding a Statement for Enlarged-View Boundary Lines

In Application 29/791,249 (ProSearch file history pp. 5, 11, 16, 17), a Non-Final Rejection mailed August 2, 2022 objected to the specification and directed that a sentence be added “immediately following the broken line statement”: “The dot-dash broken lines represent the boundaries of the enlarged portions and form no part of the claimed design.” The Examiner did not state a reason beyond this requirement.

The Applicant added the Examiner’s sentence verbatim after the existing broken line statement, without otherwise revising that statement. A Notice of Allowance was mailed November 23, 2022.

Comment: Without such a sentence, a reader could mistake dot-dash lines around enlarged areas for claim boundaries or other unclaimed subject matter. Note also that the statement retained in this application still read “depict portions of the ELECTRIC BUG ZAPPING RACKET in which the design is embodied that form no part of the claimed design.” The Examiner in Example 4.19 objected to the phrase “in which the design is embodied,” but this Examiner did not, which shows that examiner practice varies. Rule 3.13, Rule 3.19

4.30 Improper Disclaimer of “Surfaces Not Shown”

In Application 29/774,360 (ProSearch file history pp. 2, 4), a Non-Final Rejection mailed October 14, 2021 objected to the descriptive statement “Any surfaces of the design not shown, including interior surfaces and any surfaces shown in broken lines, form no part of the claimed invention” as “unnecessary and improper.” The Examiner explained that “there are no apparent interior surfaces or surfaces of the design that are shown in broken line in the drawings,” so the statement “suggests that claimed portions of the design are intended to be unclaimed subject matter,” and directed that it “should be canceled.” The claimed design was an icon.

The Applicant’s response is not in the available file history.

Comment: As the Examiner noted, “[i]t is not necessary for the applicant to describe what is not shown in the drawings as forming no part of the claim.” A statement that disclaims features the drawings do not contain adds nothing and risks casting doubt on what is claimed. Rule 3.6, Rule 3.17

4.31 Improper Use of “Unclaimed” to Describe Broken Lines

In Application 29/704,052 (ProSearch file history p. 3), a Non-Final Rejection mailed August 6, 2020 objected that “[t]he use of the word ‘unclaimed’ in the description of the broken lines is improper because it misrepresents the nature of a design claim,” since “there can be no ‘unclaimed’ or ‘disclaimed’ parts of the claimed design.” The Examiner also called the reference to shade lines unnecessary and suggested a statement describing “portions of the article” that form no part of the claimed design. The Applicant’s response is not in the available file history.

In Application 29/753,786 (ProSearch file history pp. 18, 25, 39, 45), a Non-Final Rejection mailed December 21, 2021 objected to “The dash-dot lines indicate unclaimed portions of the article and form no part of the claimed design,” stating that “[a] design doesn’t have any claimed or unclaimed portions; an article does not have any claimed or unclaimed portions.” Because the drawings used two kinds of broken lines, the Examiner proposed describing the dash-dot line as the boundary of the claim. The Applicant’s response filed March 17, 2022 did so: “The dash-dot broken line shown in FIGS. 1-3 and 6 depict the boundary of the claim and form no part of the claimed design.” The Examiner’s next action stated that the response had overcome the objections to the specification. Rule 3.7, Rule 3.8, Rule 3.10

4.32 Unnecessary Statement About Relative Importance of Parts

In Application 29/715,940 (ProSearch file history pp. 3, 12, 14), a Non-Final Rejection mailed March 12, 2021 objected to the broken line description on two grounds. First, stating that “the environmental structure or the portion of the article depicted in broken lines forms no part of the design” was “unclear and is not an accurate description,” because the broken lines showed portions of the Stimulator. Second, “because broken lines are not permitted to be used to indicate the relative importance of parts of the design per MPEP 1503.02 (III),” the language about relative importance was “unnecessary and must be canceled.”

The Examiner suggested: “The broken lines in the drawings depict portions of the [insert amended title] that form no part of the claimed design,” and in the same action suggested the title “Stimulator Assembly.” The Applicant’s amendment of June 7, 2021 is not reproduced in the available file history, but the Ex parte Quayle action mailed August 18, 2021 states that “the specification and drawing objections have been overcome.” Rule 3.6

4.33 Practice Point: “Unclaimed Subject Matter” Without Identification

A statement that the broken lines represent “unclaimed subject matter,” without saying what they depict, leaves the reader to guess. Identify the broken-line subject matter (for example, portions of the [title], environment to the [title], or boundaries) and then state its relationship to the claimed design.

Preferred form: “The broken lines show portions of the [title] that form no part of the claimed design.” See also Sections 4.14 and 4.31. Rule 3.7, Rule 3.10

4.34 “Illustrate Unclaimed Environment” When the Broken Lines Show the Article

In Application 29/779,701 (ProSearch file history pp. 6, 19, 20, 43), a Non-Final Rejection mailed October 6, 2022 objected to the statement “The broken lines are used to illustrate unclaimed environment and form no part of the claimed design.” The Examiner gave three reasons. Because “the entire drawing disclosure is for illustrative purposes,” calling one portion illustrative “does not clearly describe or clarify the meaning of that portion.” The broken lines “are not environmental but instead show portions of the article itself.” And, citing In re Blum, “there can be no ‘unclaimed’ or ‘disclaimed’ parts of the claimed design.”

The Applicant adopted the Examiner’s suggested statement: “The broken lines depict portions of the integrated toilet that form no part of the claimed design.” In the same response the Applicant changed the title from “Integrated Toilet System” to “Integrated Toilet,” one of the titles the Examiner had suggested. A Notice of Allowance was mailed January 9, 2023. Rule 3.10, Rule 3.11, Rule 3.17

4.35 Replacing “And” With “That” in the Broken Line Statement

In Application 29/762,616 (ProSearch file history pp. 20, 29, 45), a Non-Final Rejection mailed March 18, 2022 objected to “The broken lines are included for the purpose of illustrating environment and form no part of the claimed design.” The Examiner’s main ground was that “the broken lines do not depict environment as stated, but instead show portions of the intraoral scanning device”; the Examiner added, without giving a reason, that “and” should be replaced with “that.” The Applicant adopted the Examiner’s suggested statement: “The broken lines are included for the purpose of illustrating portions of the INTRAORAL SCANNING DEVICE that form no part of the claimed design.”

In Application 29/753,786 (ProSearch file history pp. 17, 25, 38, 39), a Non-Final Rejection mailed December 21, 2021 required changing “and” to “that,” giving as its only reason “grammatical clarity” and the need for broken line descriptions to “expressly identify the purpose of the broken lines.” Yet the Applicant’s amended boundary sentence, like the Examiner’s own suggested boundary sentence, still used “and”: “depict the boundary of the claim and form no part of the claimed design.” The Examiner’s next action stated that the objections to the specification had been overcome.

Comment: In the guide’s view, “that” is preferable because it forms a restrictive clause tying “form no part of the claimed design” to the specific subject matter the broken lines depict. The Examiner in Application 29/753,786 called “that” a “restrictive clause” but did not explain why that matters, and the Examiner in Application 29/762,616 gave no reason at all. Rule 3.1, Rule 3.7, Rule 3.8

4.36 Using “That” Rather Than “Which” in the Broken Line Statement

In Application 29/752,343 (ProSearch file history pp. 5, 6, 8, 21, 22, 26), a Non-Final Rejection mailed May 5, 2022 objected to the statement “The broken lines represents stitching lines which form part of the claimed design.” Citing MPEP § 1503.01, the Examiner stated that “[f]or grammatical clarity” the “nonrestrictive clause [which] should be amended to the restrictive clause [that],” and suggested: “The broken lines represent stitching lines that form part of the claimed design.”

The Applicant’s amendment dated July 9, 2022 used “that” and, after a separate § 112 rejection concerning FIG. 7, added a clause that the FIG. 7 broken lines “depict portions of the LED backpack that form no part of the claimed design.” By examiner’s amendment in the Notice of Allowability, the Examiner split this into two sentences and limited the stitching sentence to FIGS. 1, 3, 4, and 5. The Notice of Allowance was mailed October 11, 2022.

Comment: Here the stitching lines were claimed. In the guide’s view, a restrictive “that” clause best ties the lines to their claim relationship. Rule 3.1, Rule 3.7, Rule 3.8

4.37 Boundary Lines Described as “Portions” of the Article

In Application 29/741,917 (ProSearch file history pp. 5, 6, 11, 24, 28), a Non-Final Rejection mailed April 6, 2022 rejected the claim under 35 U.S.C. § 112(a) and (b) as indefinite and nonenabling. The statement read: “The broken lines illustrate portions of the Vehicle Headlight that form no part of the claimed design.” The Examiner explained that the broken lines “appear possibly as boundary lines where the inside area is claimed, and the outside area is not claimed,” and suggested dot-dash boundary lines or a more specific description.

The Applicant’s response, received June 6, 2022, added boundary and environment sentences but kept one saying the boundary lines “illustrate portions of the Vehicle Headlight.” The Examiner withdrew the rejection but, in an Ex parte Quayle action mailed September 6, 2022, objected that the statements “contradict each other” and required: “The broken line(s) which define the bounds of the claimed design form no part thereof,” plus an environment sentence. The Applicant adopted that text on October 28, 2022, keeping broken lines. A Notice of Allowance was mailed November 21, 2022. Rule 3.13, Rule 3.19, Rule 3.20

4.38 Practice Point: GUI Statements and Categories of Broken Lines

In GUI and computer-generated icon applications, identify the article of manufacture (for example, “display screen or portion thereof”) and describe each category of broken-line disclosure separately, such as the display screen, the device, and portions of the graphical user interface. Avoid broad terms such as “elements,” which could imply undisclosed subject matter.

Map each category to a single purpose and state its relationship to the claimed design. See Sections 4.39 and 4.48. Rule 3.9, Rule 3.10, Rule 3.12

4.39 Overbroad GUI “Elements” Language in a One-Sentence Statement

In Application 29/898,134 (ProSearch file history pp. 9, 12, 20, 21), the statement read: “The outer broken line perimeter showing the display screen and the broken lines within showing text and elements of the graphical user interface form no part of the claimed design.” A Non-Final Rejection mailed December 13, 2024 objected to it because the language “creates confusion and misunderstanding for a designer of ordinary skill in the art.” The Examiner noted that the display screen is the article of manufacture and “should also be described clearly within the statement,” and that describing broken lines as “elements” of the GUI “is incredibly broadening.”

The Applicant adopted the Examiner’s suggested statement verbatim: “The outer broken line perimeter showing the display screen forms no part of the claimed design. The remaining broken lines, which make up portions of the graphical user interface, form no part of the claimed design.” The Notice of Allowability found the specification objections overcome. The application issued as U.S. Patent No. D1,087,991.

Comment: The Examiner’s accepted text uses a nonrestrictive “which” clause. In the guide’s view, “that make up portions” is the tighter choice. Rule 3.9, Rule 3.10, Rule 3.12, Rule 3.17

4.40 “Dots” Instead of Broken Lines, and Environment Shown in Solid Lines

In Application 29/881,717 (ProSearch file history pp. 9, 10, 26, 27, 29, 30), the statement read: “The dashed lines and the dots in the drawings illustrate the portions of the conical-shaped leg dressing that form no part of the claimed design.” A Non-Final Rejection mailed October 24, 2024 objected to the specification and rejected the claim under 35 U.S.C. § 112(a) and (b). The Examiner stated that the statement “has no basis because there are no broken lines in the disclosure” and that “‘Dots’ is atypical and therefore, raises a question about the claim scope.” The rejection also noted that Fig. 9 showed a leg and foot in solid lines, placing them in the claim.

The Applicant filed replacement drawings for Figs. 1-9 and adopted the Examiner’s suggested statement nearly verbatim: “In the drawings, the equal-length broken lines of the leg dressing depict portions thereof that form no part of the claimed design. In FIG. 9, the equal length broken lines that show a leg and foot depict environmental structure and form no part of the claimed design. All broken lines form no part of the claim.” Rule 3.1, Rule 3.12, Rule 3.14, Rule 3.17

4.41 Failure to Account for All Broken Lines and Mixed Meanings

In Application 29/962,439 (ProSearch file history pp. 18, 22, 29, 31, 36), the statement described broken lines showing unclaimed portions of the upper garment with shoe feature and said “[t]he remaining broken lines depict stitching, and do form part of the claimed design.” A Non-Final Rejection mailed October 23, 2024 objected because “the broken line statement does not accurately describe all broken lines in the drawings. Specifically, the person modeling the claimed design is not described.” The Examiner recommended replacement text.

The Applicant adopted the Examiner’s recommended statement: “The broken lines immediately adjacent to unshaded regions in the figures depict portions of the upper garment with shoe feature that form no part of the claimed design. The remaining broken lines on the surface of the article depict stitching, and do form part of the claimed design. The broke[n] lines illustrating a person represent unclaimed environmental subject matter.” An Ex parte Quayle action mailed January 10, 2025 treated the specification objection as overcome. The application issued as U.S. Patent No. D1,082,226. Rule 3.3, Rule 3.6, Rule 3.12, Rule 3.14, Rule 3.17

4.42 Omission of a Broken Line Statement Despite Two Line Styles

In Application 29/984,651 (ProSearch file history pp. 8, 9, 10, 13, 14, 16), the specification had no broken line statement, although the drawings used dash-dash and dash-dot-dot broken lines. A Non-Final Rejection mailed February 20, 2025 rejected the claim under 35 U.S.C. § 112(a) and (b): “The claim is indefinite and non-enabling because two types of broken lines have been used in the figures, but their meaning has not been clearly described in the specification.” The Examiner asked for a statement explaining whether each type of line is included in the claimed design, and offered model wording that assumed the dash-dot-dot lines were claimed stitching and the dash-dash lines were environment.

The Applicant added the model wording verbatim: “The dash-dot-dot broken lines represent stitching on Backpack Inner Compartment and are included in the claimed design. The dash-dash broken lines show environment and form no part of the claimed design.” The Notice of Allowability noted that the Applicant had “provided a broken line statement that clearly describes the two types of broken lines.” The application issued as U.S. Patent No. D1,077,477. Rule 3.3, Rule 3.12, Rule 3.14, Rule 3.17

4.43 Separate Statements for Each Line Type After Cancelling Improper Enlarged Views

In Application 29/919,177 (ProSearch file history pp. 9, 41, 43, 44, 50), the specification had three statements: dash-dash-dash lines illustrating portions of the insulating container, a dash-dot-dash boundary line, and break lines. A Non-Final Rejection mailed October 23, 2024 objected to Figs. 9-11 as “improper partially enlarged views” because they lacked dot-dash boundary indicia and a parent view. “For clarity,” the Examiner proposed rewritten broken line and break line statements, plus an enlarged-view statement to be used only “[i]f applicant elects to use the dot-dash boundary broken lines” for enlarged views.

After an interview, the Applicant cancelled Figs. 9-11, so no enlarged-view statement was needed. It substantially adopted the Examiner’s broken line and break line wording and kept a separate boundary line sentence: “The dash-dot broken lines of FIGS. 1-8 are included for the purpose of illustrating a boundary line and form no part of the claimed design.” The application issued as U.S. Patent No. D1,077,586.

Comment: Had the enlarged views stayed, the same dot-dash style would have served two purposes, boundary and enlargement, which the guide’s rules avoid. Rule 3.3, Rule 3.12, Rule 3.13, Rule 3.17

4.44 Statement Describes Broken Lines Not Present in the Drawings

In Application 29/896,993 (ProSearch file history pp. 11, 14, 21, 29), the statement read: “The broken line rectangle showing the display screen and the broken lines showing the graphical user interface illustrate portions of the display screen with graphical user interface that form no part of the claimed design.” A Non-Final Rejection mailed September 20, 2024 objected to the description of GUI broken lines “because the only broken line in the drawings is the broken line rectangle described as showing the display screen,” and required that it “be amended to remove the description of broken lines that are not present in the drawing.”

The Applicant adopted the Examiner’s suggested statement verbatim: “The broken line rectangle showing the display screen illustrates portions of the display screen with graphical user interface that form no part of the claimed design.” The Notice of Allowability stated that the amendment “overcomes the objection.” The application issued as U.S. Patent No. D1,077,856.

Comment: A statement must match the drawings. Describing a line type that does not appear is as much a defect as omitting one that does. Rule 3.2, Rule 3.6, Rule 3.9

4.45 Adding a Boundary Line Clause to the Statement

In Application 29/894,356 (ProSearch file history pp. 13, 22, 28), the statement read: “The broken lines shown in the Figures show portions of the Toy that form no part of the claimed design.” A Non-Final Rejection mailed October 29, 2024 objected to it and, “[i]n order to clearly set forth the scope of the claimed design and purpose of the broken lines in the drawings,” suggested: “The broken lines immediately adjacent to the shaded areas depict the bounds of the claimed design, while all other broken lines are directed to environment. The broken lines form no part of the claimed design.”

The Applicant incorporated the suggestion but described the other broken lines as part of the article rather than environment: “The broken lines immediately adjacent to the shaded areas depict the bounds of the claimed design, while all other broken lines show portions of the Toy that form no part of the claimed design. The broken lines form no part of the claimed design.” The application issued as U.S. Patent No. D1,077,942. Rule 3.13, Rule 3.17, Rule 3.19, Rule 3.20

4.46 Nonstandard “Illustrative Purposes” Language Without Identification

In Application 29/877,742 (ProSearch file history pp. 10, 11, 13, 15, 21, 22, 26), the statement ended: “The broken lines are for illustrative purposes only and form no part of the claimed design.” A Non-Final Rejection mailed October 24, 2024 objected that “the words ‘illustrative purposes’ do not properly describe or clarify the use of broken lines in the drawings” and that “the description of the broken line portions of the design must be changed.” The Examiner suggested replacement wording.

The Applicant amended the statement “as suggested by the Examiner” to read: “In the drawings, the broken lines depict portions of the article that form no part of the claimed design.” The Notice of Allowability quoted the amended statement. The application issued as U.S. Patent No. D1,077,553.

Comment: The original already disclaimed the broken lines. What it lacked was any identification of what they depict: “illustrative purposes” says why lines are drawn, not what they show. Rule 3.7, Rule 3.8, Rule 3.10, Rule 3.11

4.47 Unclear Whether a Portion Is Claimed, Cured by Separating Boundary Lines

In Application 29/876,153 (ProSearch file history pp. 9, 10, 12, 13, 27, 29, 30, 33), the statement read: “The broken lines shown in the drawings illustrate portions of the GAME CONTROLLER STAND that form no part of the claimed design.” A Non-Final Rejection mailed December 30, 2024 rejected the claim under 35 U.S.C. § 112(b), stating that “[o]ne cannot determine whether the portion inside the circle annotated below, found in Fig. 6, is claimed or not claimed without resorting to conjecture.” If that portion was not claimed, the Examiner said, the Applicant could overcome the rejection by amending the statement, and the Examiner offered model text.

The Applicant adopted the model text verbatim: “The broken lines immediately adjacent to the shaded surfaces depict the bounds of the claimed design, whereas all other broken lines shown in the drawings illustrate portions of the game controller stand that form no part of the claimed design.” It also amended Figs. 4 and 6. The Notice of Allowability stated that the amendment “clarifies the scope of the claim; therefore, the rejection is withdrawn.” The application issued as U.S. Patent No. D1,077,920. Rule 3.13, Rule 3.17, Rule 3.19, Rule 3.20

4.48 GUI Statement That Fails to Separate the Display Screen From the GUI

In Application 29/843,654 (ProSearch file history pp. 12, 14, 19, 20, 24, 43), the Applicant added a display screen border to overcome a 35 U.S.C. § 171 rejection, and the statement then read: “The broken lines of even length showing of elements, including a display screen and text thereon, illustrates portions of the display screen and forms no part of the claimed design.” A Final Rejection mailed October 9, 2024 raised a new objection: “The broken line statement does not clearly differentiate between which broken lines form the display screen and which form the graphical user interface.” The Examiner explained that the environment, the article (the display screen) and the GUI “should all be appropriately identified,” to meet the article of manufacture requirement of § 171.

The Applicant adopted the Examiner’s suggested wording, beginning: “The outermost broken lines of even length showing the display screen form no part of the claimed design.” A second sentence disclaimed the remaining broken lines showing the GUI, “such as text.” The Notice of Allowability stated that the amendment “overcomes the objection.” The application issued as U.S. Patent No. D1,077,829. Rule 3.9, Rule 3.10, Rule 3.12, Rule 3.17

4.49 Practice Point: Environment and Enlarged-View Boundaries

When separate line conventions indicate environmental subject matter and enlarged-view boundaries, describe each convention clearly and separately. Identify what each line type depicts and whether it forms part of the claimed design.

For example: “The broken lines show portions of the [title] that form no part of the claimed design. The dot-dash broken lines show the boundaries of the enlarged views and form no part of the claimed design.” See Section 4.53. Rule 3.13, Rule 3.14, Rule 3.17

4.50 Two Broken Line Types, One Described, and “Illustrative Purposes Only”

In Application 29/762,031 (ProSearch file history pp. 12, 19, 27, 29, 32), the statement read: “The broken lines in the drawings are for illustrative purposes only and form no part of the claimed design. Broken lines formed by equal length dashes show unclaimed subject matter.” A Non-Final Rejection mailed October 28, 2024 objected to the statement and relied on it in a 35 U.S.C. § 112(a) and (b) rejection. The Examiner wrote: “The broken line statement is redundant and may be misinterpreted. There are two broken line types shown in the drawing disclosure yet the broken line statement describes only one.” The Examiner added that “illustrative purposes only” does not properly describe the broken lines.

The Applicant adopted the Examiner’s suggested statement verbatim: “In the drawings, the equal-length broken lines depict portions of the sample collection device of the analyte detection system that form no part of the claimed design. The dash-dot-dash broken lines define the boundaries of the claim. All broken lines form no part of the claim.” The application issued as U.S. Patent No. D1,079,050. Rule 3.6, Rule 3.11, Rule 3.12, Rule 3.13, Rule 3.17

4.51 Boilerplate “If Present” Statement With No Broken Lines in the Drawings

In Application 29/905,557 (ProSearch file history pp. 9, 13, 15, 19, 31), the specification as filed said: “Broken lines, if present, form no part of the claimed design and are used for illustrative purposes to show an environment of the claimed design in a condition of use.” The drawings had no broken lines. A Non-Final Rejection mailed February 3, 2025 objected: “there are no broken lines present in the drawings. Therefore, the broken line statement must be removed from the Specification.”

To overcome a separate 35 U.S.C. § 112(a) and (b) rejection, the Applicant converted areas of Fig. 6 to broken lines and added: “Portions of the Valve Assembly shown in broken lines form no part of the claimed design.” It left the “if present” statement in the clean specification, however. The Examiner cancelled it by examiner’s amendment in the Notice of Allowability issued with the Notice of Allowance mailed May 1, 2025, noting that the Applicant had included “the original broken line statement as well as the corrected broken line statement.” The application issued as U.S. Patent No. D1,078,936. Rule 3.6, Rule 3.7, Rule 3.15

4.52 Statement That Does Not Say What the Broken Lines Depict

In Application 29/854,633 (ProSearch file history pp. 11, 24, 28, 40, 41, 45), the statement read only: “Broken lines form no part of the claimed design.” A Non-Final Rejection mailed June 21, 2024 objected to it “because the meaning of the broken lines in the drawings is not defined,” and suggested a statement naming the titled article: “Broken lines depict portions of the wolf footprint treat [sic] for legged robot and form no part of the claimed design.”

The Applicant adopted the suggestion, correcting the Examiner’s typographical error: “Broken lines depict portions of the wolf footprint tread for legged robot and form no part of the claimed design.” Later prosecution, a Final Rejection and a continued prosecution application, concerned drawing issues unrelated to the statement. The application issued as U.S. Patent No. D1,078,813.

Comment: The Examiner did not require the exact title, but the suggested text used it, which keeps the statement aligned with the title of the article. Rule 3.5, Rule 3.7, Rule 3.8, Rule 3.9

4.53 Statement That Does Not Fit the Elected Figures or Explain Enlargement Lines

In Application 29/878,490 (ProSearch file history pp. 8, 11, 22, 30, 31, 37), after the Applicant elected Figs. 1-10 in a restriction, a Non-Final Rejection mailed August 15, 2024 objected to the statement: “The top or the top and the bottom of the golf ball bottle shown in broken lines illustrate environmental structure only and form no part of the claimed design.” The Examiner found that it “does not accurately describe the purpose of those broken lines illustrated in the drawings of the elected embodiments,” which appeared to show unclaimed portions of the design, and that “there should be a second broken line statement” for the long dashed lines marking the enlargements.

The Applicant adopted the Examiner’s suggested verbiage: “The short dash broken lines shown in the drawings depict portions of the GOLF BALL BOTTLE that form no part of the claimed design. The long dash broken lines depict the designation of enlargement views of the GOLF BALL BOTTLE and form no part of the claimed design.” The Notice of Allowability found the specification objections overcome. The application issued as U.S. Patent No. D1,078,487. Rule 3.10, Rule 3.12, Rule 3.17

4.54 “Environmental or Other Features” Instead of Portions of the Article

In Application 29/973,642 (ProSearch file history pp. 12, 14, 16, 18, 30), the statement read: “The broken lines shown in the figures illustrate environmental or other features that form no part of the claimed design.” A Non-Final Rejection mailed February 12, 2025 objected to it “for not identifying the purpose of the broken lines shown in the drawings,” citing MPEP § 1503.02, subsection III, and suggested replacing “environmental or other features” with “portions of the article.”

The Applicant made the change but named the article by its title: “The broken lines shown in the figures illustrate portions of the projection lamp that form no part of the claimed design.” The application issued as U.S. Patent No. D1,079,097.

Comment: “Environmental or other features” hedges between environment and the article itself. A statement should commit to what the lines show. Rule 3.7, Rule 3.8, Rule 3.10

4.55 Nonstandard “Illustrative Purposes” Phraseology

In Hague Application 35/518,915 (ProSearch file history pp. 8, 22, 25, 39), a Notification of Refusal mailed May 20, 2024 rejected the claim under 35 U.S.C. § 112(a) and (b) because “it is unclear what the broken lines in the figure drawings represent,” and offered model wording. The Applicant instead added: “The broken lines in the figures illustrate the portions of the Advertising Boards for illustrative purposes that form no part of the claimed design.” An Ex parte Quayle action mailed December 9, 2024 objected that “[t]he term ‘illustrative purpose’ does not properly describe the purpose of the broken lines in the drawings,” citing In re Blum, and required the model wording.

The Applicant adopted the required statement verbatim: “The broken line portion of the figure drawings is included to show portions of the article that form no part of the claimed design.” The Notice of Allowance was mailed March 12, 2025.

Comment: The defect arose only because the Applicant departed from the Examiner’s model statement. Rule 3.7, Rule 3.8, Rule 3.11

4.56 Second Broken Line Style Added by Amendment Without a Description

In Application 29/913,792 (ProSearch file history pp. 8, 11, 16, 19), the Applicant’s amendment of March 10, 2025 revised the statement to read: “The broken lines, lead lines, and detail view numbers shown on the drawings form no part of the claimed design.” In the same amendment, to overcome a 35 U.S.C. § 112 rejection, the Applicant added enlarged views (Figs. 9-10) bounded by a second, long dash-dash broken line style. An Ex parte Quayle action mailed April 2, 2025 then objected to the statement as a new ground “because two types of broken lines are shown and are not clearly described.” The Examiner suggested a separate sentence for each style.

The Applicant followed the suggestion in substance but restructured it: “The short dash-dash broken lines show portions of the golf club head, and the long dash-dash broken lines depict the bounds of the enlarged views. The short dash-dash broken lines, the long dash-dash broken lines, lead lines, and detail view numbers shown on the drawings form no part of the claimed design.” The Notice of Allowability stated that “[t]he amendment overcomes the objection to the broken line statement.” The application issued as U.S. Patent No. D1,088,158. Rule 3.12, Rule 3.17

4.57 Indefinite “Dots” Reference, Open-Ended “As Well As,” and Mischaracterized Environment

In Application 29/919,955 (ProSearch file history pp. 17, 20, 25, 26), the statement read: “The dashed lines and dots in the drawings illustrate the portions of the head dressing that form no part of the claimed design, as well as the dashed lines of the neck, ears, face and head.” A Non-Final Rejection mailed April 29, 2025 objected to the specification and rejected the claim under 35 U.S.C. § 112(a) and (b). The Examiner found that “[t]he only ‘dots’ in the disclosure are the stippled shading on the forehead”; that “as well as” “implies that there may be other broken lines or broken line types elsewhere in the disclosure”; and that the broken line elements “are not physical ‘portions’ of the design” but environmental structure.

The Applicant adopted the Examiner’s suggested wording: “The equal-length broken line showing of a human head depicts environmental subject matter only and forms no part of the claimed design.” The title also changed from Head Dressing to Head Bandage. Rule 3.1, Rule 3.10, Rule 3.14, Rule 3.17, Rule 3.25

5. Enforcement and Practice Notes

5.1 Broken Line Statements as Intrinsic Record Evidence

A broken line statement, once filed, becomes part of the intrinsic record of the design patent. It is read together with the drawings to determine what the broken lines show and what is claimed. The role of drafting conventions such as broken lines, and the effect of representations made during prosecution, are matters that bear on the scope of the claim. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc). A statement that is imprecise, ambiguous, or inconsistent with the drawings can affect claim scope in ways the applicant did not intend.

5.2 Amendments and Later Enforcement

A change from solid lines to broken lines can narrow the design shown as claimed, and it can raise separate issues of written description support, priority, prosecution history disclaimer, and estoppel. The consequences are fact-specific.

Written description and priority. A boundary or other broken-line change added by amendment or in a continuation must be supported by the original disclosure. An applicant may not freely subdivide a previously claimed surface in a later application, and a claim that lacks support loses the benefit of the earlier filing date. In re Owens, 710 F.3d 1362, 1366-69 (Fed. Cir. 2013). No amendment may introduce new matter. 35 U.S.C. § 132(a).

Estoppel. Prosecution history estoppel applies to design patents. Whether it bars an infringement claim turns on three questions: (1) whether there was a surrender; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).

Before making the change, determine (1) whether the originally filed drawings support the resulting claimed design; (2) whether the amendment changes the claimed visual impression or merely clarifies the existing disclosure; and (3) whether the applicant is making a surrender to secure allowance. A statement that an amendment is made “for clarity” does not control the analysis, but the amendment’s actual scope and prosecution context do. Where the same objective can be met without converting solid lines to broken lines, consider that route.

5.3 Infringement Analysis

Features shown only in broken lines ordinarily are not claimed features of the design. They nevertheless may be relevant to claim construction, because the drawings, the article of manufacture, the line convention, and the prosecution history provide context for identifying the claimed visual design. Egyptian Goddess, 543 F.3d at 680. Infringement remains an overall ordinary observer comparison informed, where appropriate, by the prior art.

5.4 Validity Considerations

Broken line treatment can affect the validity of a design patent. A claimed design that is overly narrow due to unnecessary or excessive use of broken lines may be more difficult to enforce. Conversely, ambiguous or inconsistent broken line usage may prompt an objection or, if the figures and specification do not convey the scope of the claimed design with reasonable certainty, may support a § 112 rejection or a later indefiniteness challenge. In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). Not every error or inconsistency in the drawings is fatal; the question is whether it precludes an overall understanding of the design. Id. at 1375-76.

5.5 Pre-Filing Strategy

The most effective broken line practice begins before filing. Practitioners should identify at the outset which portions of the article are intended to be claimed and which are to be disclaimed, and should design the drawings accordingly. Relying on post-filing amendments to introduce or convert broken lines increases prosecution risk, may introduce new matter or lack written description support, and can create estoppel issues. See Section 5.2. Where broader protection is desired, filing continuation applications with different broken line configurations, supported by the original disclosure, is generally preferable to amending broken lines in the parent application.

5.6 Continuation and Divisional Strategy

Because broken line treatment directly defines claim scope, practitioners should consider filing continuation or divisional applications to pursue alternative claiming strategies without affecting the prosecution history of the parent. A continuation may claim a broader or narrower portion of the same article using different broken line configurations, but the continuation’s claim must be supported by the parent disclosure to receive the parent’s filing date. In re Owens, 710 F.3d at 1366-69. This approach preserves flexibility while limiting the effect on the parent application.

When a design patent family includes multiple related applications such as a parent and one or more continuations, broken line statements across the family should be reviewed for consistency. Inconsistent broken line usage or conflicting statements across related applications can create ambiguity regarding the intended scope of each claim and may complicate enforcement or licensing.

Appendix 1 (Broken Line Statement (BLS) Evaluation Checklist)

1. Presence and Placement

☐ Do the drawings contain broken lines? If yes, is a BLS included? (Expected practice; examiners object when it is missing.) If no, is the BLS omitted?

☐ Is the BLS in the FEATURE DESCRIPTION section, between the figure descriptions and the claim (37 C.F.R. § 1.154(b))?

2. Required Core Elements

☐ Does the BLS expressly identify what is represented by each type of broken line (e.g., portions of [title], environment to [title], boundaries, stitching, fold lines, etc.)?

☐ Does the BLS clearly state that the broken-line subject matter forms no part of the claimed design (preferably, “that form no part of the claimed design”)?

☐ If multiple styles of broken lines are used (dash-dash, dash-dot, thick, thin), does the BLS distinguish between them?

☐ Is the article’s title used instead of “article” or another generic term?

3. Language Rules (preferred practice)

☐ No use of the phrase “for illustrative purposes only,” even alongside a statement of what the broken lines show.

☐ No use of “environmental” without “environment to the [title].”

☐ No use of “unclaimed portions” or “unclaimed subject matter.”

☐ No use of “phantom lines.”

☐ No use of “in which the design is embodied.”

☐ No unnecessary phrases like “in the drawings” or “in the current figures” unless essential for clarity.

☐ Uses “that” instead of “which” or “and” when describing portions that form no part of the claimed design.

☐ Avoids redundant phrases such as “unclaimed subject matter” plus “that form no part of the claimed design.”

4. Content Accuracy

☐ No broken line type is assigned multiple meanings (e.g., both environment and boundary).

☐ No reference to internal parts of an article in broken lines.

☐ No implication that only some of the broken-line subject matter forms no part of the claimed design.

☐ No description of what is not shown in the drawings as forming no part of the claimed design.

☐ For enlarged areas, does the BLS clearly identify the boundaries as such?

☐ For boundary lines, is the description accurate (not described as “portions of the [title]”)?

☐ If stitching or fold lines are claimed, are they properly described in the broken line statement?

☐ If environmental structure is shown, is it identified as “environment to the [title]”?
☐ If the design is partial, do broken lines clearly distinguish unclaimed portions from claimed boundaries?
☐ If boundary lines create negative space, is the scope unambiguous?

5. Drawing Cross-Check

☐ Every style of broken line in the drawings is accounted for in the BLS.

☐ The visual use of each broken line style matches the stated purpose.

☐ Broken lines are consistent in length, thickness, and spacing throughout all figures.

☐ Broken lines do not merge with solid lines.

☐ Shading does not make unclaimed subject matter shown in broken lines appear claimed.

☐ No legends, arrows, or indicators are used to identify claimed vs. unclaimed portions.

☐ Broken lines are not used to show relationships between two parts of the claimed design.

☐ No “dots” are used to indicate unclaimed matter. If present, convert to equal-length broken lines.
☐ If a boundary is intended, confirm a broken-line boundary appears in the drawings and is identified in the broken line statement.
☐ Broken lines are not heavier or more prominent than solid lines.

☐ Shading Check: Have surface-shading lines been avoided on regions shown entirely in broken lines, unless needed and clearly limited to conveying the contour of the solid-line claimed portion?

Appendix 2 (Broken Line Statement Questions and Answers)

Q1. What is the purpose of broken lines in a design patent drawing?

A:  Broken lines are used to depict subject matter that forms no part of the claimed design, such as portions of the article, environment to the article, or boundaries. Under some circumstances, broken lines also depict claimed stitching or fold lines, which the broken line statement must identify as such.

Q2. Are broken lines automatically excluded from the claim without a written statement?

A:  No. When drawings use broken lines, include a feature description that clearly explains their purpose and relationship to the claimed design. The MPEP states that unclaimed subject matter must be described as forming no part of the claimed design, and examiners have objected or rejected claims under § 112 when broken lines appear without a statement (see Section 4.12). Although the necessary wording depends on the figures, an express statement is ordinarily the safest and expected prosecution practice. MPEP § 1503.02, subsection III.

Q3. Where should the broken line statement appear in the specification?

A:  The FEATURE DESCRIPTION section, after the figure descriptions and before the claim, is the default location. 37 C.F.R. § 1.154(b).

Q4. May the broken line statement appear in the preamble?

A:  Generally, no. Put the broken line explanation in the FEATURE DESCRIPTION section rather than the preamble. The preamble ordinarily should not include claim-scope disclaimers or descriptive statements regarding broken lines.

Q5. May the broken line statement appear in the description of the figures?

A:  Not as a general statement. The figure descriptions should describe what each figure shows. Figure-specific language may be used where a line convention appears in only one figure, but the general broken line statement belongs in the FEATURE DESCRIPTION section.

Q6. May the broken line statement appear in the claim?

A:  No. The claim must remain limited to the formal claim language and should not contain explanatory statements regarding broken lines.

Q7. What is acceptable language for a broken line statement?

A:  Standard language includes formulations such as:
“The broken lines show portions of the [title] that form no part of the claimed design.” Equivalent language may be acceptable if it clearly identifies the broken-line subject matter and its relationship to the claimed design.

Q8. Should the broken line statement identify what the broken lines represent?

A:  Yes. The statement should specify whether broken lines depict portions of the [title], environment to the [title], boundaries, or other identified subject matter such as stitching or fold lines.

Q9. Can broken lines be used to show environment to the article?

A:  Yes. Broken lines are commonly used to depict environment to the article, provided the statement identifies it as environment to the [title] that forms no part of the claimed design.

Q10. Can broken lines be used to define a boundary of the claimed design?

A:  Yes. A broken-line boundary may be used where the boundary does not exist in reality in the article. A boundary added by amendment or in a continuation must be supported by the original disclosure. MPEP § 1503.02, subsection III; In re Owens, 710 F.3d 1362, 1366-69 (Fed. Cir. 2013).

Q11. Can broken lines be used to disclaim functional elements?

A:  Broken lines may exclude elements from the claim, but they cannot be used to retroactively recharacterize functional subject matter inconsistently with the original disclosure.

Q12. Are broken lines required when environment to the article is shown?

A:  Yes. Environment to the article should generally be shown in broken lines to avoid unintentionally claiming it.

Q13. Is it permissible to add broken lines during prosecution?

A:  Only if the broken-line treatment is supported by the originally filed disclosure. Otherwise, the amendment may introduce new matter or lack written description support, and a later application relying on it may lose the benefit of the earlier filing date. In re Owens, 710 F.3d 1362, 1366-69 (Fed. Cir. 2013).

Q14. Does converting solid lines to broken lines narrow the claim?

A:  It usually changes the design shown as claimed. Whether that narrowing matters later depends on the prior art, the reason for the amendment, and the prosecution record. See Section 5.2.

Q15. Does stating that broken lines are added “for clarity” avoid estoppel?

A:  Not by itself. The stated reason does not control the analysis, but the amendment’s actual scope and prosecution context do.

Q16. Can broken line amendments give rise to prosecution history estoppel?

A:  Yes. Prosecution history estoppel applies to design patents. It bars an infringement claim only if there was a surrender, the surrender was for reasons of patentability, and the accused design is within the scope of the surrender. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).

Q17. Should broken line amendments be avoided when possible?

A:  Not necessarily. An amendment is often the quickest way to resolve an objection. Before amending, consider whether the original disclosure supports the change, whether the change surrenders claim scope, and whether a continuation could pursue the broader claim.

Q18. Can broken lines be added in a continuation application instead?

A:  Yes. Continuation practice may allow different claiming strategies without surrendering scope in the parent application.

Q19. What happens if the broken line statement is inconsistent with the drawings?

A:  Inconsistency typically results in a formal objection requiring correction and may delay prosecution.

Q20. Can broken lines be used inconsistently across figures?

A:  No. Inconsistent line treatment across figures often triggers objections and creates claim-scope ambiguity.

Q21. Do broken line statements affect claim construction?

A:  Yes. Broken line statements are part of the intrinsic record and may be relied upon during claim construction.

Q22. Can broken lines affect infringement analysis?

A:  Yes. Features shown only in broken lines ordinarily are not claimed features of the design, but they may inform claim construction and the visual context of the claimed design. See Section 5.3.

Q23. Can broken lines be used to exclude color or surface treatment?

A:  Broken lines may exclude structure, but color or surface treatment exclusions are typically addressed through separate statements in the specification.

Q24. Should broken line statements be updated after drawing amendments?

A:  Yes. Any change in line treatment requires review and, if necessary, revision of the broken line statement.

Q25. Are broken line statements considered purely formal?

A:  No. Broken line practice directly affects claim scope and enforceability and should be treated as substantive.

Q26. Can broken lines be used to show alternative embodiments?

A:  Not in the same view. Alternate positions of a design component illustrated by full and broken lines in the same view are not permitted. 37 C.F.R. § 1.152. Whether alternative embodiments may be shown in separate figures of one application depends on whether they present a single design or patentably distinct designs.

Q27. Can broken lines be used to show internal features?

A:  No. Broken lines may be used to show visible environment, but they may not be used to show internal features, hidden planes, or surfaces that cannot be seen through opaque materials. See Rule 3.23 and MPEP § 1503.02.

Q28. Do broken line statements interact with new matter rules?

A:  Yes. Improper broken line amendments may introduce new matter under 35 U.S.C. § 132.

Q29. Should broken line strategy be considered at filing?

A:  Yes. Early planning of broken line usage can avoid later narrowing amendments.

Q30. Can broken lines be used to show the remainder of the article in a partial design?

A:  Yes. Broken lines are commonly used to show the remainder of the article when claiming only a portion.

Q31. Is a broken line statement required in partial design applications?

A:  Partial-design applications commonly use broken lines and should make the claimed boundary and any unclaimed subject matter clear. A broken line statement is the usual way to do so.

Q32. Can broken lines be used to avoid restriction requirements?

A:  Not reliably. Restriction practice depends on the examiner’s assessment of distinct designs, not merely line treatment.

Q33. Do examiners object to broken line wording?

A:  Often. Examiners frequently issue formal objections for placement, wording, or inconsistency, although practice varies among examiners and art units.

Q34. Should practitioners argue broken line objections?

A:  Usually a conforming amendment is the fastest cure. Respond with argument, however, when the objection rests on a misreading of the figures or the law, or when the proposed change would alter the claimed design.

Q35. Can broken lines affect continuation and divisional strategy?

A:  Yes. Broken line treatment in a parent application may influence the scope and viability of related applications.

Q36. When should I use “environment to the [title]” vs. “portions of the [title]”?

A: Use “environment to the [title]” when broken lines show separate objects or context (e.g., a hand holding the article, a display stand, background elements). Use “portions of the [title]” when broken lines show parts of the article itself that are not claimed.

Q37. Can I show the same article multiple times in one application?

Yes. If the claim is directed to the collective appearance of multiple articles, such as a pair of shoes, the title should identify a single entity (for example, “pair” or “set”), and the specification should state that the claim is directed to the collective appearance. MPEP § 1504.01(b). If the claim is directed to one article and another instance is shown only for context, show the additional instance in broken lines as environment to the [title].

Q38. How do I handle stitching that is both functional and ornamental?

A: If stitching contributes to the ornamental appearance, show it in solid lines or broken lines identified as “stitching that forms part of the claimed design.” If purely functional or structural, show it in broken lines identified as portions of the [title] that form no part of the claimed design.

Q39. What if my broken line statement was initially wrong but the examiner didn’t object?

A: You may still correct it via amendment. However, be cautious of substantive changes that might be viewed as narrowing amendments with prosecution history implications.

Appendix 3 (Limitations of this ProGuide)

This ProGuide addresses the proper form, common rejections, and recommended language for broken line statements (BLS) in U.S. design patent applications. It is intended as a reference for preparing and evaluating BLS language based on USPTO practice, MPEP guidance, and prosecution history examples. It does not evaluate or analyze the actual drawing figures of a design application.

Because the ProGuide does not review drawings, it cannot:

Detect whether the drawings contain broken lines that are not described in the BLS;

Identify whether multiple types of broken lines (e.g., dash–dash, dash–dot, thick vs. thin) appear in the drawings without being addressed in the BLS;

Determine whether the visual style, length, spacing, or weight of broken lines in the drawings matches the descriptions in the BLS;

Identify whether broken lines merge into solid lines in the drawings, creating ambiguity.

Detect improper use of broken lines to show hidden planes, shading, or internal parts;

Confirm whether claimed stitching or fold lines are depicted correctly in solid lines or broken lines.

The ProGuide also cannot detect:

Whether the article title used in the BLS exactly matches the application’s official title in the specification;

Whether the BLS omits environmental subject matter that is present in the drawings;

Whether a BLS description conflicts with examiner preferences or idiosyncratic USPTO practices in a particular art unit;

Whether broken line usage complies with special rules for computer-generated icons, GUIs, or multiple-article claims.

This ProGuide does not determine whether a particular broken-line amendment gives rise to prosecution history estoppel, disclaimer, or other litigation-related scope limitations, which depend on case-specific facts and judicial interpretation.

Accordingly, this ProGuide should be used together with a careful manual review of the actual drawing figures, the specification, and any applicable examiner guidance. It is a tool for identifying likely issues in BLS wording, not for confirming complete compliance with USPTO requirements.

This ProGuide also does not cover every possible broken line statement scenario that may arise. It is updated periodically to address new or less common BLS issues as they are identified in practice.

Appendix 4 (Selected MPEP, CFR, Statutory, and Case References)

MPEP quotations are from the Ninth Edition of the MPEP, Revision 01.2024 (November 2024), the current revision as of this update.

A. MPEP § 1503.01, subsection II (Description)

No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). While not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper. Ex parte Spiegel, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919). Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views.

(A) In addition to the figure descriptions, the following types of statements are permissible in the specification: 

(3) Statement indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented.

B. MPEP § 1503.01, subsection III (Design Claim)

Full lines in the drawing show the claimed design. Broken lines are used for numerous purposes. Under some circumstances, broken lines are used to illustrate the claimed design (i.e., stitching and fold lines). Broken lines are not permitted for the purpose of identifying portions of the claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 907, 153 USPQ 177, 180 (CCPA 1967) (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.”). See also MPEP § 1503.02, subsection III.

C. 37 C.F.R. § 1.152, quoted in MPEP § 1503.02 (Drawing)

37 C.F.R. 1.152   Design drawings. The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.

D. MPEP § 1504.01(a), subsection I.B (Computer-Generated Electronic Images)

The complete disclosure must be considered when evaluating a design claim that includes a computer-generated electronic image. More specifically, USPTO personnel must read the disclosure to determine what is claimed as the design and whether the design is embodied in an article of manufacture. USPTO personnel must:

(C) Review the drawing to determine whether a display panel, or a portion thereof, is shown in sufficient views to fully disclose the design as embodied in the article.

(1) If the drawing does not depict a computer icon or a GUI embodied in a display panel, or a portion thereof, in either solid or broken lines, reject the claimed design under 35 U.S.C. 171  for failing to comply with the article of manufacture requirement.

E. MPEP § 1504.01(b) (Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article)

While the claimed design must be embodied in an article of manufacture as required by 35 U.S.C. 171, it may encompass multiple articles or multiple parts within that article. See Ex parte Gibson, 20 USPQ 249 (Bd. App. 1933). When the design involves multiple articles, the title must identify a single entity of manufacture made up by the parts (e.g., set, pair, combination, unit, assembly). A descriptive statement should be included in the specification making it clear that the claim is directed to the collective appearance of the articles shown. If the separate parts are shown in a single view, the parts must be shown embraced by a bracket “}”. The claim may also involve multiple parts of a single article, where the article is shown in broken lines and various parts are shown in solid lines. In this case, no bracket is needed. See MPEP § 1503.01.

F. MPEP § 1509 (Reissue of a Design Patent)

If a drawing view includes both a cancelled and amended version, and the change in the amended version is for the purpose of converting certain solid lines to broken lines, the reissue specification must include a statement indicating the purpose of the broken lines.

G. MPEP § 1503.02, subsection III (Broken Lines)

“The 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. 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.” . . . “Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof.”

“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.”

“Broken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials.” . . . “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 . . . .” . . . “Further, surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim.”

H. Selected Cases

In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967) (“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 U.S.C. § 112.”).

In re Zahn, 617 F.2d 261, 267-69 (C.C.P.A. 1980) (a design for an article of manufacture may be embodied in less than all of an article; unclaimed portions shown in broken lines).

In re Owens, 710 F.3d 1362, 1366-69 (Fed. Cir. 2013) (unclaimed boundary lines; a boundary added in a continuation must satisfy the written description requirement to receive the parent’s filing date).

In re Maatita, 900 F.3d 1369, 1375-77 (Fed. Cir. 2018) (a design claim is indefinite if one skilled in the art, viewing the design as would an ordinary observer, would not understand its scope with reasonable certainty; drawing errors that do not preclude an overall understanding of the design do not merit a § 112 rejection).

Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 701-05 (Fed. Cir. 2014) (prosecution history estoppel applies to design patents).

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc) (a court may address the role of drafting conventions such as broken lines, and the effect of prosecution history, as matters that bear on the scope of the claim).

This presentation is published by Design Patent Pro LLC as general educational and informational material about United States design patent practice. It is not legal advice, and it is not a substitute for the advice of an attorney. Viewing this presentation, downloading any accompanying materials, or contacting Design Patent Pro does not create an attorney-client relationship. Reasonable efforts were made to ensure accuracy, but the law changes and errors can occur, so nothing here should be relied upon as a substitute for independent research. ©2026 Robert G. Oake, Jr. All rights reserved.