Break lines are a well-known and frequently used drawing convention incorporated into certain design patent drawings to limit the length of a depicted product either because the length is irrelevant or of an excessive size to fit on the drawing page. Depicted below are two Break line drawing conventions, from one of the earlier published standards for lines used in technical drawings.
But is this drawing convention clearly understood by all who employ them, and are they even understood by the examiners at the USPTO? Can the use of Break lines be potentially fatal in a design patent and make it ripe for an indefiniteness challenge? In answer to these questions, a brief review of the art of the specialized form of drawing required for design patents may be helpful.
Design patent drawings adhere to the standards developed a long time ago that are derived from orthogonal projections "...in which exact views of an object are constructed by extending perpendiculars from points on the object to the plane of projection." Such orthogonal drawings generally depict Top, Front, Side, Back and Bottom views. To aid in comprehension of the orthogonal views in a design patent, a so-called "Perspective" view is also frequently employed which abdicates dimensional accuracy for visual comprehension by depicting portions of three orthogonal views in a single image.
Break lines may be used in perspective and orthogonal drawings to limit the depiction of a product in design patent drawings when the products length is either irrelevant or excessive to fit on a page.
Irrelevance is found, for example, in the design of an extrusion or a molding where only the height and width are defined, while such a product may be of any length and its length is therefore irrelevant, as depicted in the USPTO's A Guide to Filing A Design Patent Application, page 16 depicted below.
I note that the USPTO labels the above drawing as having an "Indeterminate Length" Indeterminate is defined as: "1 not determinate; spec., a) inexact in its limits, nature, etc.; indefinite; uncertain; vague..." I also note that in the above depicted example, the USPTO also states that "the precise length of the molding is not claimed." How could it be, since the Break lines indicate that the picture frame molding can be of any length? It is therefore impossible to tell from this image whether the length of the molding is a foot, a yard or a mile in length. Since the length of the molding is not defined, all that is claimed in this example is the ornamental design of the profile of the molding as depicted in the configuration of the height and the width as shown at the end of the molding and the ornamental design viewable along the side of an indeterminate length. Assuming there was an orthogonal end view, one skilled in the art could easily replicate the design depicted in this example, but would not be limited to a specific length, which is not claimed. Therefore the actual length and the overall proportions of the molding are indefinite and therefore irrelevant in this example.
Another example of the correct use of Break lines occurs when, for the convenience of clarity in a drawing, excessive product length is shortened to allow for an enlarged depiction of portions of a product. For example, in Figure 1 (depicted below) of US D355,102 issued Feb. 7, 1995 and titled "Rake", Break lines are used to shorten the handle, allowing an enlarged image of the rake portion to be seen and understood.
Figure 1 was of course not the only image of the claimed ornamental design in this patent. Figure 2 (shown above on the right) depicts the entire length of the handle, so the overall appearance and the visual impression it makes is clearly shown, and not left to conjecture when all the views of the patent are considered as required by the decision in Contessa Food Products, Inc. v. ConAgra, Inc., 282 F.3d 1370.
In addition to the Break lines depicted in the above chart and in the design patent depicted above, there is another acceptable drawing convention to indicate: "...conventional breaks for cylindrical bars and tubing are known as "S: breaks." This drawing convention is depicted below in Figure 4 of US D357,097 issued April 4, 1995 and titled: "RV Waste Tank Cleaning Tool" which allows for a detailed presentation of the features of the claimed design, while the overall appearance is clearly defined in Figure 1, also shown below. Thus, when one skilled in the art views all six figures of this patented design; they would be able to replicate the claimed ornamental design.
Both designers and members of the legal profession working with patents know that design patents protect the overall ornamental appearance of an article of manufacture, and
"The design must be represented by a drawing that complies with the requirements of 37 CFR § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design." (Emphasis added)
Drawings in a design patent must also conform to 35 U.S.C. §112, paragraph (b) (also previously referred to as "indefiniteness") that states:
"CONCLUSION. - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention."
In other words, a design patent cannot be indefinite. The Supreme Court in Nautilus recently clarified the standard for examining indefiniteness in an issued patent. The Court explained:
"...we hold that the patent is invalid for indefiniteness if it's claims,...failed to inform, with reasonable certainty, those skilled in the art about the scope of the invention." The court also stated: "First, definiteness is to be evaluated from the perspective of someone skilled in the relevant art." and "At the same time, a patent must be precise enough to afford clear notice of what is claimed..."
Although the decision reached by the Supreme Court in Nautilus concerned a utility patent, it is apparent, to me at least, that it is also applicable to design patents which have only a single claim.
So the question is, when does an indeterminate length make an ornamental design indefinite and thus invalid under U.S.C. §112, (b)? To answer that question I have selected at random a recently issued design patent that, as far as I know, is not part of any litigation, and of which I had no prior knowledge, yet serves as an example of, in my opinion, an indefinite and therefore potentially invalid design patent. The patent is US D715,339 issued October 14, 2014. I depict Figure 1 below and note that all fourteen (14) figures of this patent disclose Break lines on each portion of the design depicted.
Because Break lines are incorporated in each of the three structural elements that comprise the entire article of manufacture depicted, how would one skilled in the art to which the patent pertains, be able to replicate it? We have already been instructed by the illustration and text shown above from the USPTO A Guide to Filing A Design Patent Application, that an indeterminate length can be depicted in a design patent, but because of its indefiniteness, the third dimension is not claimed. All that can be claimed in that specific illustrated example is the design and the configuration of two of the dimensions depicted, not the third dimension.
We have also seen in the two previously cited design patents that did use the Break line drawing convention that the overall length of the abbreviated structures was also depicted, providing one skilled in the art to which the patent pertains, the ability to replicate the ornamental design claimed. But not in this patent; with all of the elements of an indeterminate length, it would be impossible for one skilled in the art to replicate the claimed design. In this example, the use of Break lines proved to be potentially fatal, since the patent does not conform to 35 USC §112(b).
Just because the USPTO issues a design patent does not mean that it meets the statutory and regulatory requirements established by the courts, nor does it mean that patent examiners at the USPTO necessarily fully understand the ramifications of the use, or misuse, of Break lines in design patent applications. If there are questions about the drawings used in the preparation of a design patent, or the validity of a design patent, you should engage a skilled expert who fully understands the basic drawing conventions and can explain their meaning or faulty application to help a court or jury to reach a decision.
The author has served as an industrial design expert witness in 67 design patent cases.
Robert John Anders is a member of the Industrial Designers Society of America and the Human Factors and Ergonomic Society with more than 40 years of professional experience. Mr. Anders has been retained as an Industrial Design Expert for over 17 years.
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