[Patentpractice] Obnoxious requirement for drawing

[bill at eshelman.biz]

I always respond to that sort of obnoxious requirement as Mr. Snowden mentions: Add a figure with a 'black box' with a reference numeral (and then add the reference numeral to the item already recited in the spec.

 

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Patentpractice
Sent: Friday, February 28, 2025 5:16 PM
To: patentpractice at oppedahl-lists.com
Cc: Timothy Snowden <tdsnowden at outlook.com>
Subject: Re: [Patentpractice] Obnoxious requirement for drawing

 

Don't know about this examiner, but I believe MPEP says something (at least multiple examiners have been trained) that 'black box' boxes with a reference numeral (and then add the reference numeral to the item already present in the spec are no new matter. Don't have time to look it up right now.

I like your 3rd paragraph.

The bit about not entering the drawing may be used as an excuse for mailing a non-response letter.

On 2/28/2025 4:05 PM, David Boundy via Patentpractice wrote:

The examiner is requiring a new drawing to show completely routine stuff.   I am inclined to give the examiner a hand-drawn interim draft, and explain as follows.  Is there a better way to do this?  I don't want the risk of new matter -- this examiner has been a complete SOB and I don't trust him to not raise a new matter issue if I send the new drawing.

 

In response to an objection to the drawings, Applicant tentatively tenders the attached draft FIG. 8

 

Applicant questions the PTO’s authority to issue this requirement.  The applicable statute,  35 U.S.C. § 113, permits the Director to require new drawings only “where necessary for the understanding of the subject matter sought to be patented.”  In five Actions, “understanding” of the relationship of the [x, y, and z] were never an issue.  This Action makes no such allegation.  Without a credible showing of "necessary for understanding," the Office has no authority to require a new drawing.


Nonetheless, Applicant has translated several mentions of [x, y, and z] in the specification into a minimalist drawing that introduces no new matter.  Applicant stipulates that this new drawing is not offered, and may not be used, (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

 

Applicant does not offer this tentative drawing for entry, only to prevent abandonment, and to demonstrate that the new figure contributes nothing to “understanding of the subject matter sought to be patented” and therefore not within the Office’s authority to request.


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