[Patentpractice] Obnoxious requirement for drawing

[David Boundy]

I'm aware of the regulation.  I don't think there's any ambiguity in the
clash, that 37 CFR 1.53 arrogates authority that the statute does not
grant.  The question is what to do about it.

On Sat, Mar 1, 2025 at 1:51 AM Randall Svihla <rsvihla at nsiplaw.com> wrote:

> Hi, David
>
>
>
> What about 37 CFR 1.83?
>
>
>
> *§ 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.
>
>
>
> (b) When the invention consists of an improvement on an old machine the
> drawing must when possible exhibit, in one or more views, the improved
> portion itself, disconnected from the old structure, and also in another
> view, so much only of the old structure as will suffice to show the
> connection of the invention therewith.
>
>
>
> (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).
>
>
>
> Best regard,
>
>
>
> Randall S. Svihla
>
> NSIP Law
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *David Boundy via Patentpractice
> *Sent:* Friday, February 28, 2025 5:06 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>
> *Subject:* [Patentpractice] Obnoxious requirement for drawing
>
>
>
> 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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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
>
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>
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*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
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