[Patentpractice] [External Sender] Petition for Color Drawings Denied

Wed Oct 29 23:21:30 UTC 2025

In the past, I never had any issue getting such granted by simply stating that “color is necessary to understand at least some of the drawings”.

This past year, I had one such petition rejected… required that I point to a specific drawing.

Thus, my renewed petition simply stated after the above statement “See, for example, FIG. [X].”

I did not provide any other reason or explanation… and the renewed petition was granted.

I loathe stating/admitting any more than what is the bare minimum because such additional information can likely bite one in the ass later.

(btw, the Figure I used in to justify the Petition for Color Drawings is one that actually require color to appreciate the data presented thereby.)

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
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F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Brad Czerwonky via Patentpractice
Sent: Wednesday, August 20, 2025 7:05 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Brad Czerwonky <bczerwonky at taylorduma.com>
Subject: Re: [Patentpractice] [External Sender] Petition for Color Drawings Denied

I agree it should not be so difficult to get a petition for color drawings granted.

That said, similar to my understanding of Roger’s approach, I used the magic language from 37 CFR 1.84(a)(2), e.g., the color drawings are “the only practicable medium for illustrating aspects the claimed invention” to get a denial of a petition to allow use of color drawings (some/most of which also included photographs) reversed.

The following may have also helped:

  *   Brief rationale supporting why the color drawings “are the only practicable medium for illustrating aspects the claimed invention” (avoiding unnecessary comment about specific figures does make sense, and I believe I focused more on why certain elements of the drawings generally not coming through in B&W, and I also specifically mentioned the USPTO habit of degrading B&W figures as an aggravating factor)
  *   Examiner interview
  *   Converting, by amendment based on a request from the examiner, a few figures to B&W that arguably did not need to be in color
  *   Providing a few examples of patents in which similar use of color in drawings had been allowed
  *   (Including also with the original filing the language in the spec that indicates at least one drawing is executed in color, etc.)

Interestingly enough, the matter involved filing one petition in each of two sister applications sharing the same spec and figures but different claims. In the one application, the petition was granted without a hitch. In the second application, I took the steps above to get the petition granted. Needless to say, two different USPTO officials reviewed the petitions. The examiner ultimately assigned in either application could at some point, at least in theory per the official who initial denied the petition in the second application but then reversed course, still object to one figure or another including photographs and/or being in color.

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Bradford R. Czerwonky
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Roger Browdy via Patentpractice
Sent: Tuesday, August 19, 2025 12:14 PM
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Cc: Roger Browdy <Roger.Browdy at FisherBroyles.com<mailto:Roger.Browdy at FisherBroyles.com>>
Subject: Re: [Patentpractice] [External Sender] Petition for Color Drawings Denied

I often get such petitions denied on first attempt.  In my request for reconsideration I again use the magic words that are necessary to prove the necessity for color drawings.  Here is an example of one like yours that was granted:

Applicant respectfully petitions for acceptance under 37 CFR
§1.84(a)(2) of color drawings in the accompanying application.  Some of the figures
are in color.  The color drawings are needed as, for some of the figures, the features
illustrating the invention shown only by color cannot be distinguished in a
corresponding black and white copy.  Attention is respectfully drawn to Figure 18A,
as an example of a drawing requiring color as the only practical medium by which to
disclose the subject matter sought to be patented.  Figure 18A shows
immunofluorescence using monoclonal antibodies that fluoresce in red and green
mounted in DAPI (blue) (see the brief description of Figs. 18A-C bridging pages 20
and 21 of the specification as filed).

The features shown in these figures by color could not be distinguished
in a corresponding black and white copy.  Thus, color drawings are the only practical
medium by which to disclose the content of the flow cytometry analyses that are
needed to fully understand the subject matter sought to be patented.

Roger L. Browdy
Partner
_____________________________________________
FisherBroyles, LLP
direct: +1 202-277-5198
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Tuesday, August 19, 2025 11:13 AM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: [External Sender][Patentpractice] Petition for Color Drawings Denied

So, I filed a Petition to Accept Color Drawings in a regular US Utility, which the color is truly necessary as it shows different fluorescent colors in a 3D tissue sample… invention is essentially a method for determining the effect of certain agents on tissue damage, which can be seen by the difference in fluorescent staining in a chunk (not just a slice) of tissue.

The petition was denied because the Petitions Office claims that there is an insufficient showing of necessity of color.

Here is an exemplary tissue sample in color and what it would be in gray scale below:
[A collage of images of a rock inflamed  AI-generated content may be incorrect.]

[A comparison of rock invertebrate  AI-generated content may be incorrect.]

It’s stupid that I must waste my time with this.  I’m going to respond to the dismissed petition by asking the USPTO to point to each nuclei in the black/white version of the drawing.

Suzannah K. Sundby<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.linkedin.com_in_ssundby_&d=DwMFAg&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=6TypfcJHCa1nd1akqx0TdFx_O4nHpbupcopTrY20gzW-IgEzrHNRGNdZKMI7RHwY&s=VWSYYUjzP6v3UrY1uKUqBvg_fdubNo7tExCDr39ZdEk&e=> | Partner
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