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[Patent 1]

Anybody has good arguments against drawing objections under 37 CFR 1.83(a)?  Sometimes it is just imposible to show every limitation in the drawings, especially with regard to functional limitations.  Thanks.  

[Isaac]

I kinda struggle with this, and when I identify something I think ought to be shown in the drawings, I think my supervisor disagrees with me about 50% of the times.

Kinda funny because I remember being right 100% of the time when I examined  

[JimIvey]

Why is any feature ever required in the drawings?  My understanding is that drawings are only required "where necessary for the understanding of" the invention (35 USC S 113).  I'd say that the vast majority of drawings included in patent applications are entirely superfluous -- albeit helpful -- as far as the law is concerned.  In fact, many patents issue all the time without drawings.  Do they claim no features?

And, for all the ex- (or current-) examiners out there, what is the intended objective in requiring someone to add a little box somewhere with text in it?  Does it really protect the public in some way or somehow make the patent system work better?  Or is it just that examiners have the ability to second-guess the author of the application as to what "should" have been in the drawings and have to power to force such changes to me made?  I really don't get it.

Fortunately, it's usually not impossible to get around -- every feature in the claims must be supported in the spec and the supporting language in the spec should be sufficient to support some silly little text-box somewhere to placate the examiner.  It just seems pointless and annoying from the practitioner's perspective.

Just wondering....

[Isaac]

Why is any feature ever required in the drawings?  My understanding is that drawings are only required "where necessary for the understanding of" the invention (35 USC S 113).  I'd say that the vast majority of drawings included in patent applications are entirely superfluous -- albeit helpful -- as far as the law is concerned.  In fact, many patents issue all the time without drawings.  Do they claim no features?

There is no statutory requirement.   There is only a PTO rule requiring it.  

And, for all the ex- (or current-) examiners out there, what is the intended objective in requiring someone to add a little box somewhere with text in it?  Does it really protect the public in some way or somehow make the patent system work better?  Or is it just that examiners have the ability to second-guess the author of the application as to what "should" have been in the drawings and have to power to force such changes to me made?  I really don't get it.

Examiners don't make the rules, but they do take them seriously.    They second guess the author about what is supposed to be in the drawings because they have a rule that suggests that there is a standard for what should be in the drawings.   I don't see any difference in principle from second guessing the inventor about indefiniteness in a claim.

[JimIvey]

I don't see any difference in principle from second guessing the inventor about indefiniteness in a claim.

I see a huge difference.  Congress said that a claim must not be indefinite.  Congress said that drawings are optional unless required for understatnding the invention.  Period.

To what extent is the PTO free to establish its own rules for patentability?  Is the PTO free to establish a tougher obviousness standard than that set by Congress and interpreted by the Fed.Cir. and the S.Ct.?  Of course, when it comes to requiring restriction and interpreting the law concerning that, the PTO seems to be free to change "and" in the statute to "or" in the rules.

I have no problem with the PTO establishing fees, rules for filing papers (e.g., certificates of mailing, transmission by fax, etc.), manner of making amendments, etc.  But the PTO has no authority to set new hurdles for sufficiency of a patent application in terms of novelty, non-obviousness, and sufficiency of disclosure.  The PTO's job is to enforce and implement the law as passed by Congress, not to make their own law.

My 2c...

[JimIvey]

Y'know, you raise an interesting point.  The issue is typically raised as an objection to the drawings.  What happens if I just don't change the drawings?  Do I get my claims?  I suspect the whole case is just held up until I capitulate -- no allowance until the drawings are fixed.  Worst case, the failure to amend the drawings (or amend the claims to not recite features not in the drawings) would ultimately result in a 112 rejection for lack of support.

Like I said before, so far, the fix has been easy -- some silly little text box in some random location in the drawings and the examiner goes away happy.  The application in no way comports with the law any better (and was always sufficient), but the case isn't held up for some silly little rule that's contrary to the well-established law.

Regards.