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Author Topic: Showing all claim elements in the drawings  (Read 548 times)

Tabo

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Showing all claim elements in the drawings
« on: 11-13-17 at 04:31 am »

I'm wondering how you would show subjective things - from the perspective of the user of a device - in drawings.

A part of the claims involves handing things differently when they are in the "field of view" of a user. This is simply what the user sees at a given moment (something behind him, for instance, would not be in his field of view until he turns his head).

This was an element of the claims in prior amendments, and the examiner never mentioned it. Now the examiner thinks it should be shown in the drawings.

Any good way to handle this? The application is moving towards appeal, so I would greatly prefer to argue it with case law rather than amend the drawings or claims.
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smgsmc

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Re: Showing all claim elements in the drawings
« Reply #1 on: 11-13-17 at 07:58 am »

In my experience, if a picky Examiner really digs in his heels, you won't get anywhere, because he's supported by a strict interpretation of:


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.

If it's a method claim, you can get by with a simplistic flow chart in which the text of each step of the claim is enclosed in a separate box, with the proper flow depicted by arrows.  You don't need to show the details within a step.

If it's a device claim, have a block diagram with one block labelled "user", another block labelled "field of view", and dashed lines from the user block to the field-of-view block.  In similar instances, I've also depicted the user as an outline of a person including an eye, depicted the field of view as a circle with objects in it, and dashed lines from the eye to the circle. 

If the Examiner is amenable to an interview (this is after final?), I would submit draft drawings to him and ask, "OK?"

 

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still_learnin

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Re: Showing all claim elements in the drawings
« Reply #2 on: 11-13-17 at 12:43 pm »

If it's a device claim, have a block diagram with one block labelled "user", another block labelled "field of view", and dashed lines from the user block to the field-of-view block.  In similar instances, I've also depicted the user as an outline of a person including an eye, depicted the field of view as a circle with objects in it, and dashed lines from the eye to the circle. 

+1.

But I wouldn't make a distinction between a method claim and a device claim when it comes to computer/electronics/software. That is, suppose you're claiming an auto-focus digital camera feature. If background, foreground, visible, not visible, in field-of-view, not in field-of-view are distinctions that are claimed, then I'd use a drawing to illustrate these concepts, regardless of whether my claim took the form of "apparatus comprising logic configured to focus on a foreground of a captured image" or "method comprising steps of focusing on a foreground of a captured image."

If the Examiner is amenable to an interview (this is after final?), I would submit draft drawings to him and ask, "OK?"

Also a good idea.
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Robert K S

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Re: Showing all claim elements in the drawings
« Reply #3 on: 11-13-17 at 05:44 pm »

My sense is that Rule 83(a) is mostly invoked where the Examiner simply does not like your application and wishes to drive up costs.  You will know this for certain if you receive a new matter objection in response to your issuance of new drawings even though you're really not adding anything that would be considered new to a person skilled in the art.  For this reason, any new drawings or new elements in old drawings should be kept as simple and as bland as possible--labeled boxes only.  Any such new matter issue can in certain circumstances be one of those things that is both petitionable and appealable, so timely take both routes.
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mersenne

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Re: Showing all claim elements in the drawings
« Reply #4 on: 11-13-17 at 06:23 pm »

You will know this for certain if you receive a new matter objection in response to your issuance of new drawings [...]

This is my nightmare scenario, but it's never actually happened to me (knocks wood).

Examiner: "Drawings required."  ("Claims not enabled")
Inventor: "Here are drawings."
Examiner: "Aha!  You implicitly admitted that the claims are not enabled by filing new drawings, but the drawings contain new matter and cannot be added.  Checkmate!"

I did have one guy require a bunch of new drawings.  I ended up putting claim elements in boxes on a page, for about 12 pages.  It was stupid, but the Examiner didn't maintain the objection.
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Robert K S

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Re: Showing all claim elements in the drawings
« Reply #5 on: 11-13-17 at 06:25 pm »

The only way to respond to stupid objections is with stupid amendments.  It's the only thing that's ever worked.
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midwestengineer

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Re: Showing all claim elements in the drawings
« Reply #6 on: 11-14-17 at 01:19 pm »

One way to approach this type of objection is to argue that 1.81 is controlling with respect to which drawings must be shown and that 1.83 only specifies what must be included in the contents of the drawings.  For example, you might argue that 1.83 does not specify which drawings must be shown or the selection of the content of the drawings, only that if there is a claim element illustrated in the drawings the claim element should be marked as a numbered element in the drawing. 

There are a range of claim limitations that do not lend themselves to graphical illustration but are amicable to textual description.

Also, remember that objections cannot be appealed, only petitioned.
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Robert K S

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Re: Showing all claim elements in the drawings
« Reply #7 on: 11-14-17 at 03:08 pm »

Also, remember that objections cannot be appealed, only petitioned.

As I pointed out above, that is not always true in cases like this.  See MPEP 608.04(c).  The Board can, for example, decide a companion written description issue where Rule 83(a) has been invoked and new drawings entered in response are objected-to as alleged new matter.  Although the Board will properly decline an invitation to render a finding of no new matter, where they reverse (e.g.) a companion written description rejection, the PTO generally drops the objection and issues the patent.
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smgsmc

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Re: Showing all claim elements in the drawings
« Reply #8 on: 11-14-17 at 05:48 pm »

One way to approach this type of objection is to argue that 1.81 is controlling with respect to which drawings must be shown and that 1.83 only specifies what must be included in the contents of the drawings.  For example, you might argue that 1.83 does not specify which drawings must be shown or the selection of the content of the drawings, only that if there is a claim element illustrated in the drawings the claim element should be marked as a numbered element in the drawing. 

There are a range of claim limitations that do not lend themselves to graphical illustration but are amicable to textual description.

Also, remember that objections cannot be appealed, only petitioned.
I don't see how 1.81 gets you off the hook at all.

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.

So the Examiner states that the drawing is necessary for the understanding of the claim, and you argue that it's not?  That will get you far.

Regardless of whether you win that argument, the Examiner simply comes back with 1.81(c):

(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.

My interpretation:  The Examiner can require a drawing simply because he wants one.  Are you going to argue that the subject matter cannot be illustrated by a drawing?  As discussed above, you can always put text in a box ... voila, a drawing.

Why screw around?  Just give him the damn drawing and be done with it (as long as he doesn't pull the "no new matter" stunt).
« Last Edit: 11-14-17 at 06:23 pm by smgsmc »
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smgsmc

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Re: Showing all claim elements in the drawings
« Reply #9 on: 11-14-17 at 06:07 pm »

The only way to respond to stupid objections is with stupid amendments.  It's the only thing that's ever worked.
The stupidest drawing amendment I had to deal with was when an Examiner insisted that all rectangular boxes in a drawing must have a text label.  Typically I include text labels for all elements in my drawings, along with the requisite reference numbers.  But in this instance, it was a detailed circuit diagram.  Rather than splitting the diagram over several sheets (adding text labels to each element would have required a lot more room), I left out all text and used reference numbers only, to keep within a single sheet.  So, according to the Examiner, no need for text to be attached to circles, ellipses, triangles,  hexagons, ... but rectangles must have attached text.  I couldn't fit text within the rectangles, but fortunately there was sufficient white space close to each rectangle that I could enter text with a leader to the rectangle.
« Last Edit: 11-14-17 at 06:11 pm by smgsmc »
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Robert K S

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Re: Showing all claim elements in the drawings
« Reply #10 on: 11-14-17 at 07:20 pm »

Yeah.  That may seem stupid and distinctly unhelpful when the issue is one of space.  On the other hand, I am also grateful when a complicated drawing in a cited reference document has legible labels on all the components.  When reviewing a cited reference in order to respond to a rejection, I have having to spend time cross-checking drawing components with specification designations and annotating the drawings with text labels.
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smgsmc

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Re: Showing all claim elements in the drawings
« Reply #11 on: 11-14-17 at 09:40 pm »

  For example, you might argue that 1.83 does not specify which drawings must be shown or the selection of the content of the drawings, only that if there is a claim element illustrated in the drawings the claim element should be marked as a numbered element in the drawing. 

I don't agree with your interpretation of 1.83.  It states unequivocally:  "The drawing in a nonprovisional application must show every feature of the invention specified in the claims."   Carried to the extreme by some Examiners, it's stupid.  I don't like it, but it's there.  To me that explicitly states certain required contents of the drawings.   It doesn't say, "Hey if a claim element happens to appear in a drawing, it needs a reference number."
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PaulWeathers

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Re: Showing all claim elements in the drawings
« Reply #12 on: 11-15-17 at 06:07 am »

The only way to respond to stupid objections is with stupid amendments.  It's the only thing that's ever worked.
The stupidest drawing amendment I had to deal with was when an Examiner insisted that all rectangular boxes in a drawing must have a text label.  Typically I include text labels for all elements in my drawings, along with the requisite reference numbers.  But in this instance, it was a detailed circuit diagram.  Rather than splitting the diagram over several sheets (adding text labels to each element would have required a lot more room), I left out all text and used reference numbers only, to keep within a single sheet.  So, according to the Examiner, no need for text to be attached to circles, ellipses, triangles,  hexagons, ... but rectangles must have attached text.  I couldn't fit text within the rectangles, but fortunately there was sufficient white space close to each rectangle that I could enter text with a leader to the rectangle.

Would changing the rectangles into parallelograms have worked without having to add text labels?
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smgsmc

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Re: Showing all claim elements in the drawings
« Reply #13 on: 11-15-17 at 07:13 am »

The only way to respond to stupid objections is with stupid amendments.  It's the only thing that's ever worked.
The stupidest drawing amendment I had to deal with was when an Examiner insisted that all rectangular boxes in a drawing must have a text label.  Typically I include text labels for all elements in my drawings, along with the requisite reference numbers.  But in this instance, it was a detailed circuit diagram.  Rather than splitting the diagram over several sheets (adding text labels to each element would have required a lot more room), I left out all text and used reference numbers only, to keep within a single sheet.  So, according to the Examiner, no need for text to be attached to circles, ellipses, triangles,  hexagons, ... but rectangles must have attached text.  I couldn't fit text within the rectangles, but fortunately there was sufficient white space close to each rectangle that I could enter text with a leader to the rectangle.

Would changing the rectangles into parallelograms have worked without having to add text labels?
During a phone interview, I did ask the Examiner that very question (not specifically parallelogram, but would some shape other than a rectangle obviate the need for a text label).  She thought I was being a smart ass, got ticked off, and was on the verge of hanging up.  I like to stay on good terms with Examiners, so I mended fences quickly and agreed to amend the drawings.  She had some perverse misreading of the rules, but she told me she'd been an Examiner for over 10 years and this is what she was taught by her boss at the start and had been doing ever since. 
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