Drawing objection

[novobarro]

The OA rejected dependent claims directed to a type of touch panel for a phone and tilt sensors such as gyro.  The drawings don't show these features, but is it really necessary?  The Examiner indicates that these features are "essential for the proper understanding of the subject matter recited in the claims."

[mersenne]

The drawings don't show these features, but is it really necessary?

MPEP 608.02(d) commonly gets cited here: "The drawing in a nonprovisional application must show every feature of the invention specified in the claims."  (The next part is commonly omitted and overlooked, or misrepresented.)  IME, it's not worth arguing with an examiner who makes this sort of rejection.  Just add a figure consisting of a bunch of boxes with names in them.  It's worthless, but cheaper than fighting.  (Just wait til you get that rejection on a method claim!)

[smgsmc]

Just to expand on mersenne's response.   Many of these drawing objections are indeed stupid, but the Examiners are squarely backed up by 37 CFR.  Don't fight the objection, just amend existing drawings or add new drawings (and amend the spec if needed).

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. ...

If you decide to fight this, the Examiner can simply come back with:

    (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.

And if you decide to fight this, the Examiner can simply come back with:

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.

*cited by mersenne
...

    (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d) .

And now you've reached ... THE END OF THE LINE.

[eighteighteight]

Did the examiner reject the claims, or object to them? If they are rejected anyway (based on 102/103/112), then ask for the drawing objection to be held in abeyance until the claims are otherwise in condition for allowance, and argue the rejection. If this is the only thing keeping you from issuance, then just submit a drawing with the features. 

[Lefty714]

A word of caution with respect to not substantively responding to drawing objections (either by argument or submitting new/amended drawings), 37 CFR 1.85 states in part:

"Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action"

I would not request that the drawing objections be held in abeyance as this will likely result in the amendment not being entered, which doesn't help anyone.

[Toot Aps Esroh]

When I'm anointed King Toot of AIPLA, I'm going to petition the PTO to revise the mess that 1.81 and 1.83 are. 

[currancchs]

A word of caution with respect to not substantively responding to drawing objections (either by argument or submitting new/amended drawings), 37 CFR 1.85 states in part:

"Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action"

I would not request that the drawing objections be held in abeyance as this will likely result in the amendment not being entered, which doesn't help anyone.

I agree, asking for the drawing objection(s) to be held in abeyance isn't going to cut it for the reasons already discussed. This language has, in my experience, always been cited in the OA itself to make that point clear. That being said, I commonly make a brief argument that addresses the substance of the rejection, knowing that it will most likely fail, rather than spending the time to create drawings if there are still other substantive issues to be dealt with, especially in the case of price conscious clients or fixed-fee work... As the drawing objections tend to focus on one of a few issues, I have template arguments that address those issues that can be quickly deployed in this situation. In a few, rare cases, the arguments have actually been successful!

[still_learnin]

I've always been curious about the "request to hold drawing objection in abeyance" language. Does anyone understand what it actually means? How about what Examiners think it means? (Not always the same thing, but also important to know.)

I interpret the MPEP language to say: Applicant can't simply ask Examiner to freeze the objection in place so that it's deferred until later when all other issues are taken care of. And because such a request is not a bona fide attempt to advance prosecution, the Applicant must file another response -- within the 6 month statutory period -- that handles the objection in some other way.

I think that's different than arguing, to the Examiner, that the drawing objection is improper. IOW, I think such an argument is a bona-fide attempt to advance. In fact, I think that a response including arguments against the drawing objection, along with traversal of all other rejections/objections, is fully responsive to the Office Action and stops the 6-month clock.

Anybody agree? Disagree?

[Lefty714]

I agree.  I have had a case with drawing objections in which I argued that the objections were improper, and I did not amend the drawings in any way.  Although no headway was made with the examiner re: the objections, at least the response was accepted and entered. 

[Robert K S]

What was the motivation for the rule?  All it does is force even those applicants who ultimately end up having to abandon to spend money to tweak their drawings to the examiner's satisfaction.

[smgsmc]

What was the motivation for the rule?  All it does is force even those applicants who ultimately end up having to abandon to spend money to tweak their drawings to the examiner's satisfaction.

Don't know the answer.  But 1.81(c) makes no sense whatsoever.  I'm surprised that it's still there.

[Robert K S]

It seems like it implements the second sentence of section 113.

[smgsmc]

It seems like it implements the second sentence of section 113.

OK.  That sentence of 35 USC 113 makes no sense whatsoever.  I'm surprised it's still there.

But note:  35  USC 113 says "the Director may require"; whereas 37 CFR 1.81(c) says "the examiner will require". 

[Robert K S]

Yeah, but that's what regs often do.  They take legislative Congressional permission and turn it into an executive administrator directive.  I guess the rule still gives the examiners some leeway, to say that the invention does not admit of illustration.  I've seen some method cases (read: Alice-bait) where there were no drawings and the examiner didn't howl.