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Author Topic: Are drawings required even for elements not claimed?  (Read 352 times)

RolandS

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Hello all together!

May an examiner object to the drawings because they fail to show an embodiment described in the description but not (yet) claimed?

Quote
The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing.

Isn't the invention defined by the claims?

How can I argue against such an objection?

Thank you very much!
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smgsmc

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Re: Are drawings required even for elements not claimed?
« Reply #1 on: 11-15-17 at 06:30 pm »

The Examiner has the language from 1.83 and 1.81 jumbled up.  As I cited in another post concerning drawing requirements, here’s the exact language:


37 CFR § 1.83  Content of drawing.

(a)  The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.

37 CFR § 1.81 Drawings required in patent application.

(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.

(c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.


“The subject matter sought to be patented” is the subject matter claimed.  But before you proceed, have you verified that you do have drawings that comply with 1.83(a) for all your claims?  If so, I would then traverse by citing the language above.  Be prepared for the Examiner to simply repeat the same objection though.  You will then need to decide whether to petition or amend the drawings and spec (sometimes this gets real messy depending on how much needs to be added).  I would also ask for an interview to check out whether the Examiner is willing to be reasonable.
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Robert K S

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Re: Are drawings required even for elements not claimed?
« Reply #2 on: 11-15-17 at 06:48 pm »

"Please provide a new drawing.  Just don't make it different from any of the old drawings otherwise I'll object to it as new matter."
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

still_learnin

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Re: Are drawings required even for elements not claimed?
« Reply #3 on: 11-16-17 at 11:49 am »

The Examiner has the language from 1.83 and 1.81 jumbled up. 

True. This language is a form paragraph from the MPEP, which is what Examiners use to put together rejections. The MPEP doesn't always accurately represent the law :-)

Be prepared for the Examiner to simply repeat the same objection though.  You will then need to decide whether to petition or amend the drawings and spec (sometimes this gets real messy depending on how much needs to be added).  I would also ask for an interview to check out whether the Examiner is willing to be reasonable.

Before taking any action, I'd talk to the Examiner and see what his real issue is, i.e., if he has a particular feature ("structural detail") in mind that wants to see illustrated. And if that feature is already claimed. Then you can decide which strategy makes the most sense: arguing objection before the Examiner; petitioning the objection; amended drawing; new drawing; or even amending the claim to remove the feature.

If you do decide to amend/new drawing, I'd also run it by the Examiner before spending time/money on it, to get a feel on whether the drawing you have in mind is likely to trigger a new matter objection.

Note that petitions must be filed within 2 months, and that the usually (fee-based) extensions of time are not available.
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RolandS

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Re: Are drawings required even for elements not claimed?
« Reply #4 on: 11-19-17 at 02:55 pm »

I have read on this forum that I can just file drawings consisting of boxes where I name the boxes according the structural elements used in the description.
And that this would not introduce new matter.
Will this be sufficient?

Also with the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWINGS, do I have to address every figure from scratch or can I write that figure 2 depicts  the same as with figure 1 except that widget 2 is shifted forward with respect to widget 4
And that in figure 3 with respect to figure 2 an additional widget 4 is shown and also a widget 5, while widget 5 is not referenced in figure 3 but that reference can be taken from figure 4 showing a similar embodiment with the same widget 5?

If every widget has to be referenced with its reference number in every figure, there is just not enough space for all the numbers.

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mersenne

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Re: Are drawings required even for elements not claimed?
« Reply #5 on: 11-19-17 at 04:56 pm »

I have read on this forum that I can just file drawings consisting of boxes where I name the boxes according the structural elements used in the description.
And that this would not introduce new matter.

I believe it's really up to the examiner, and whether s/he wants to make an issue of it.  For example, I can imagine a situation where you made a drawing as you propose, but the position of the boxes on the page communicates something that was not clear in your initial disclosure.  (E.g., box 2 is placed between box 1 and box 3, where it needs to be, but the disclosure didn't explain why that is significant.)

It's probably best to consult with the examiner, and even provide DRAFT drawings if there is a question.  If you officially propose to submit new figures in response to an examiner requirement, but the examiner then rejects them for containing new matter, you will have created a smelly mess in the file history that will probably make things difficult for your enforcement efforts in the future.

Also with the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWINGS, do I have to address every figure from scratch or can I write that figure 2 depicts  the same as with figure 1 except that widget 2 is shifted forward with respect to widget 4
And that in figure 3 with respect to figure 2 an additional widget 4 is shown and also a widget 5, while widget 5 is not referenced in figure 3 but that reference can be taken from figure 4 showing a similar embodiment with the same widget 5?

If every widget has to be referenced with its reference number in every figure, there is just not enough space for all the numbers.

Whatever you do needs to be clear, and not introduce new matter.  This is another question to bring up with the examiner.
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still_learnin

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Re: Are drawings required even for elements not claimed?
« Reply #6 on: 11-21-17 at 12:30 pm »

Also with the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWINGS, do I have to address every figure from scratch or can I write that figure 2 depicts  the same as with figure 1 except ...

Standard practice for "Brief Description [of the Drawings]" is to give only a high-level description of the invention ("Figure 1 shows a widget; Figure 2 shows a widget"). No need to explain how drawings differ from one another.

That's for this particular section of the patent specification. Once you're in the Detailed Description of the Invention and you're actually discussing the drawings, it's fairly common to say "Figure 1 shows one embodiment of a widget that includes a circular insert. ... Figure 2 shows another embodiment of a widget that includes a rectangular insert." I'd phrase it something like that, rather than saying "Figure 2 is like 1 except for these differences."
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smgsmc

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Re: Are drawings required even for elements not claimed?
« Reply #7 on: 11-21-17 at 09:19 pm »

If every widget has to be referenced with its reference number in every figure, there is just not enough space for all the numbers.
According to the drawing rules, if the same element appears in multiple drawings, it should (or must?) be labelled with the same reference number.  I'm a bit surprised you don't have room for the reference numbers.  They usually don't take much space.  A couple of options:

(a) If you have room inside the box, the reference number can be placed inside.  In this case, the reference number is underlined, as in 206.

(b) Split the drawing across two or more sheets.
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