Drawings showing every feature of the invention?

[lak0915]

If one files a CON for an application to claim an alternative embodiment, chances are those CON claim features may now be entirely shown in the drawings, especially after amending the claims. We've seen objections under 608.02(d) lately, and I think this is the first I've ever seen one. The main parts of the claim are shown, but some of the narrower features that are only in another embodiment are not shown in block diagrams or the flow charts.

How can the figures show every possible embodiment or narrowing feature of a claim? Especially since you may narrow the claim after an office action to add a feature that you may not have thought you would have to add.

Any suggestion on best way to handle these type of objections?

[patentsusa]

Just amend the drawings if the support is in the original application.  Add a block diagram or add a reference numeral and leader line. 

I usually start my application with my claims then base the spec around them so that everything in the claims is also in the specification.

If one files a CON for an application to claim an alternative embodiment, chances are those CON claim features may now be entirely shown in the drawings, especially after amending the claims. We've seen objections under 608.02(d) lately, and I think this is the first I've ever seen one. The main parts of the claim are shown, but some of the narrower features that are only in another embodiment are not shown in block diagrams or the flow charts.

How can the figures show every possible embodiment or narrowing feature of a claim? Especially since you may narrow the claim after an office action to add a feature that you may not have thought you would have to add.

Any suggestion on best way to handle these type of objections?

[PortlandPatentAttorney]

I had an examiner ask for an added figure that included only a single box with the non-pictured claim limitations typed in the box.  She said that's all she needed - a figure with the claim limitations properly disclosed and described but not particularly included in the original drawings.

J. Douglas Wells, Patent Attorney
doug@wellslegal.com

[khazzah]

The main parts of the claim are shown, but some of the narrower features that are only in another embodiment are not shown in block diagrams or the flow charts.

Any suggestion on best way to handle these type of [drawing] objections?

Ask the Examiner what sort of drawings would suffice. Maybe all the Examiner wants is a box.

Or maybe not, and you're screwed. Drawing objections can be a *real* problem. I've written blog posts about two nightmare cases where they were.

http://allthingspros.blogspot.com/2011/09/petition-drawing-objection-new-matter.html
http://allthingspros.blogspot.com/2011/07/applicant-caught-between-inconsistent.html

I dunno what makes this "every feature must be shown in the drawings" a hot button with some Examiners.

[JimIvey]

I dunno what makes this "every feature must be shown in the drawings" a hot button with some Examiners.

I don't either.  Patents issue all the time without any drawings at all.  Section 113 reads "The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented."  It's just ludicrous to say that each and every element is not understandable without some representation in the drawings.

Regards.

[khazzah]

I dunno what makes this "every feature must be shown in the drawings" a hot button with some Examiners.

I don't either.  Patents issue all the time without any drawings at all.  Section 113 reads "The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented."

The PTO seems to take the position that Section 113 is a threshold question as to whether any drawings at all are required, but that once this drawings-are-required threshold is crossed, all features must be illustrated. I say that based on the experience of myself and my colleagues, and on a few petition decisions I've come across. I blogged about one of these petitions at http://allthingspros.blogspot.com/2012/07/petition-decision-filing-date-drawings.html.

Now, in practice, the all-features-must-be-illustrated requirement is also routinely ignored, as we all know that patents issue every Tuesday with features in the dependent claims that aren't illustrated.

[smgsmc]

Examiners seem to be going crazy lately over drawing objections.

(1) In one application, I recently got my first (in six years+ practice) "every element of the invention not shown in a drawing" objection.  Including objections for dependent method claims for basically software inventions.

(2) In a second application, I got my first "drawing not labelled prior art" objection.  In support of software applications, I show a basic block diagram with processor, memory, data storage device, I/O ports, ....I've never had any problems with this.  And I've seen a zillion issued patents with variations of this theme.  Now I have an Examiner insisting that it be labelled "prior art".  I have to argue that it executes a new algorithm.

(3) In a third application, I got my first "missing descriptive text in drawing" objection.  This was a crowded circuit diagram, primarily using standard circuit element symbols, each properly labelled with a callout reference number.   A few elements were depicted as rectangles, circles, , triangles, or hexagons.  I found out that there's an obscure requirement in the MPEP that rectangular boxes be labelled with descriptive text:  this rule applies only to rectangular boxes!  I had to file replacement drawings with a text label on each rectangular box, but not on the circles, triangles, and hexagons.

The  "every element of the invention must be shown in a drawing" requirement is absurd.  Using one of our favorite examples, if I have a dependent claim "...wherein the fastener is a screw, a nail, or a rivet", I would need a drawing showing a screw, a nail, and a rivet.

I don't even comprehend the part of 37 CFR 1.81(c) which says essentially that even when drawings are not necessary to understand the invention, but the invention is capable of being illustrated, then the Examiner can require drawings.  Why?  As discussed here, any invention is capable of being illustrated.  For software, enter text or equations in boxes and label "Fig. 1".  But what purpose do the drawings serve?

[JimIvey]

The PTO seems to take the position that Section 113 is a threshold question as to whether any drawings at all are required, but that once this drawings-are-required threshold is crossed, all features must be illustrated.

So, if I understand, once any element requires a drawing, all elements require a drawing.  I'm trying really hard to find a less offensive synonym for "blatant stupidity."   Any suggestions?  If one of your children require chemo therapy, does that mean that all of your children require chemo therapy?  Well, what do you expect from an organization that doesn't understand the difference between "and" and "or" (think restriction practice)?

I think the patent system is broken, but not in the way most people think.  On the other hand, navigating this morass of grand stupidity requires mad skills and pays ridiculous hourly rates, so I shouldn't complain.

Regards.

Regards.

[khazzah]

The PTO seems to take the position that Section 113 is a threshold question as to whether any drawings at all are required, but that once this drawings-are-required threshold is crossed, all features must be illustrated.

So, if I understand, once any element requires a drawing, all elements require a drawing.

Yeah, pretty much. As I said, routinely ignored every single day by many Examiners. But still.

[JustAnotherExaminer]

The PTO seems to take the position that Section 113 is a threshold question as to whether any drawings at all are required, but that once this drawings-are-required threshold is crossed, all features must be illustrated.

So, if I understand, once any element requires a drawing, all elements require a drawing.  I'm trying really hard to find a less offensive synonym for "blatant stupidity."   Any suggestions?  If one of your children require chemo therapy, does that mean that all of your children require chemo therapy?  Well, what do you expect from an organization that doesn't understand the difference between "and" and "or" (think restriction practice)?

I think the patent system is broken, but not in the way most people think.  On the other hand, navigating this morass of grand stupidity requires mad skills and pays ridiculous hourly rates, so I shouldn't complain.

Regards.

Regards.

I think it's asinine that you can get a monopoly on some type of design and not even show the public a drawing of it.  When the entire point of the patent is to describe to the public how it works and make it.

That, to me, is crazy.

[khazzah]

I think it's asinine that you can get a monopoly on some type of design and not even show the public a drawing of it.  When the entire point of the patent is to describe to the public how it works and make it.

And the spec+drawings must do that or run afoul of the enablement requirement. Nobody is disputing that.

But your position seems to assume that a drawing aids in the POSITA understanding how it works. Probably key for most mechanical widgets.  Maybe even true for circuits. Just not true for all types of cases.

Take, for example, the claim below (for illustrative purposes only):

1.  A method comprising:
receiving an email message having a FROM field;
determining whether a value in the FROM field matches a predefined sender; and
in response to the determination, playing a sound associated with the predefined sender.

2. The method of claim 1, wherein the sound is stored in a .WAV file.

3. The method of claim 1, wherein the email message is received at a client using the POP protocol.

I submit that neither a block diagram nor a flow chart (nor any other drawing type that I can think of) aids a POISTA in understanding how to build a system that implements the method of independent claim 1.

And now you want to go further and suggest that a drawing is going to help a POSITA understand "stored in a WAV file" or "using the POP protocol"? Drawings are even *less* helpful there!

[smgsmc]

Well said, Karen.  I was about to reply in a similar vein, but your response popped up as I was about to hit the submit button.  I don't think any of us here has a problem with supplying a drawing when it truly aids in understanding the invention.  But to supply drawings  when they are not needed other than to satisfy a silly rule is, well, just silly.  Flowcharts can be helpful if there are complex branches and loops, but flowcharts of the form

In step 102, do A.
In step 104, do B,
In step 106, do C.

............

which just show a linear progression of steps, add no value other than to satisfy a requirement to have a drawing.

[JimIvey]

I submit that neither a block diagram nor a flow chart (nor any other drawing type that I can think of) aids a POISTA in understanding how to build a system that implements the method of independent claim 1.

And now you want to go further and suggest that a drawing is going to help a POSITA understand "stored in a WAV file" or "using the POP protocol"? Drawings are even *less* helpful there!

She's absolutely right here.  I'm nowhere near having ordinary skill in the art, but I can code up what the claim recites.  In fact, I think most software patents/applications include good examples of drawings that are entirely superfluous to appease examiners (and judges and juries).  They're chock full of rectangles with labels.  Who (of skill in software design) does that help?

Before I saw Karen's example, my example was going to be "wherein the pseudo-random number generator seed is a cryptographic hash of a cryptographic hash of a password entered by the user."  No software developer needs to see a picture to get that.  In fact, no software developer would communicate that by way of a drawing of any kind.  Leaving that out of the drawings in no way diminishes the contribution to the art made by the specification.  In Ruby, that's a single line of code:

Code Select Expand

reseed(Digest::SHA1.hexdigest(Digest::SHA1.hexdigest(password).to_s).to_s.hex)

Here's what I think is really going on....  There appear to be some in the PTO who believe that no patents should issue and any means by which an application can be killed is a good one.  What the "every element in the drawings" rule appears to be is a blatant "gotcha" to kill any application in which an applicant left something out of the drawings, no matter how trivial. 

I just wish the PTO would stop playing these silly games and implement the law as intended.

Regards.

[Robert K S]

Any time an examiner plays the 1.83(a) card on one of my method claims, I'll just submit a new drawing that shows a flow chart with each step of the method claim a box on the flow chart.  Works every time.

The fact that, as JimIvey points out, this objection is used as a gotcha is one reason why this reg should be challenged in court as having insufficient basis in the statute.  The courts have long held that it is not necessary for a patent disclosure to teach that which is already known in the art, or to disclose every minor detail, but that the disclosure need only flesh out that which is novel.