Takeaway: In an application directed to a "compressed tank system" for use in a vehicle fuel cell, the Examiner objected to the drawings for not illustrating the vehicle or the fuel cell. The Examiner then found the Applicant's drawing amendments unacceptable because they introduced new matter. The Petitions Office ruled that the objection was correct because the new drawings showed the location of the tank system in relation to the fuel cell and vehicle, where the originally filed application was silent on these locations. Despite an outstanding drawing objection, the Examiner passed the application to issue when the BPAI reversed all rejections.
Details:
Application 10/967,889 to Sachs (available in Public PAIR)
The Applicant filed an application titled "Heatable Hydrogen Pressure Regulator". The claims were directed to a "compressed tank system." The application included two figures, each illustrating an embodiment of a "compressed hydrogen tank system."
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Several of the claims referred to a fuel system on a vehicle. For example, dependent claim 7 read "[t]he tank system according to claim 6 wherein the tank system is associated with a fuel cell system on a vehicle." Also, the preamble of independent claim 16 read "[a] compressed tank system for a fuel cell system on a vehicle, said tank system comprising ... "
In the first substantive Office Action, the Examiner entered a drawing objection under § 1.83(a) (every feature must be shown in the claims). The objection stated that "fuel cell" and "vehicle" must be shown in the drawings or cancelled from the claims. The Office Action also included prior art rejections under § 102 and § 103.
In the first Response, the Applicant submitted an amended Figure 1.
The Applicant also amended the specification so that the text describing Figure 1 referred to newly added vehicle 26 and fuel system 28. The Applicant addressed the prior art rejections by making claim amendments.
In the next (final) Office Action, the Examiner maintained the drawing objection and also indicated that the drawing amendments were "not accepted because they introduce new matter." Specifically, the "drawing contains subject matter which was not described in the specification, such as the location of the fuel cell system and the location of the compressed tank system." The prior art rejections were maintained, and the Office Action also included a 112 First written description rejection for one of the claim limitations added by amendment.
The Applicant responded by simultaneously filing a Notice of Appeal and a Petition to the Technology Center Director. The Petition requested that the drawing objection be withdrawn. In the Petition, the Applicant argued that the claims didn't specify a location for the fuel cell system or the tank system, nor was the amended drawing directed to these locations. Specifically, the Applicant argued:
It appears to be the Examiner's position that adding the fuel cell system 26 and the vehicle 28 to figure 1 is new matter because the original disclosure didn't identify "the location of the fuel cell system and the location of the compressed tank system." Originally filed dependent claims 7 and 15 only claimed that the tank system was associated with a fuel cell system on a vehicle. Paragraph 0014 of the specification was amended to state that the fuel cell system 26 is on the vehicle 28. Nothing in the original claims identified the location of the fuel cell system and the tank system, and, accordingly, nothing in the amended specification and proposed drawing changes is directed to the location of the fuel cell system and the compressed tank system. Therefore, Applicant respectfully submits that the Examiner's non-acceptance of the replacement drawings is improper and unreasonable.
While the application was still on appeal to the BPAI, the Technology Center Director issued a Petition Decision, ruling that the drawing objection was proper. The Decision explained that "there is no support in the original disclosure which shows the relative location of the fuel cell and the compressed tank system in the vehicle" yet "proposed figure 1 now clearly shows where the fuel cell system and the compressed tank system is located in relation with each other in the vehicle." Therefore, the new drawings did introduce new matter, and the objection to the drawings for introducing new matter was proper.
Four years later, the BPAI issued a decision reversing all the rejections (§ 112 First, § 102, and § 103). The Examiner then issued a Notice of Allowance which allowed all pending claims. No mention was made of the drawings or the outstanding drawing objection. The Applicant paid the Issue Fee, and the patent issued.
My two cents: One lesson here is that if you claim an overall system as well as an apparatus, it's wise to have a drawing that illustrates the overall system, even if that's not the focus of your app.
The Petition Decision seemed to be bad news for the Applicant, but turned out to be irrelevant because the Examiner allowed the application anyway after the Board reversed. I've run across a few cases having outstanding objections going into appeal, and this behavior – the objection simply disappears – seems to be fairly common. However, my blog post on the Frye application ("Applicant caught between inconsistent BPAI Decision and Petition Decision") shows that you can't always count on that.
As to the merits of the Petition Decision, I disagree that the amended drawings "clearly show" where the claimed systems are located "in relation with each other in the vehicle." The drawings look to me like schematics or block diagrams that don't convey a particular location. Perhaps the Applicant would have been better off with an amended drawing that looked even more like a black box – maybe showing the vehicle as a rectangle rather than the stylized vehicle.
I have railed on Examiners and the BPAI before, but the Petition branch is where the real winners are. Besides typically waiting until after the Petition is moot to render a decision (i.e., "the Petition is moot") their lack of legal acumen and common sense is legendary.
ReplyDeleteThe Examiner requires a drawing showing a tank and fuel-cell system within a vehicle. How is the Applicant supposed to file such a drawing without placing the individual elements somewhere within the vehicle? This would have been a valid issue to raise if Applicants claimed a particular location, but they didn't.
If you wonder why the USPTO has such a backlog, just look at the pissant issue that consumed the time of Examiner, Applicant and Petition Branch.
Also, Karen is right. The drawings don't clearly show the claimed system in relation with each other in the vehicle. The drawings certainly aren't to scale and it is impossible to tell the front end of the "vehicle" from the back end.
Ultimately, the Examiner came to his/her senses and allowed the application, but not after time was wasted on all sides.
You have the wrong serial number listed, it is 10/967,889.
ReplyDelete>You have the wrong serial number listed,
ReplyDeleteCorrected. Thanks!
You're welcome.
ReplyDeleteI agree with the second poster - what a monumental waste of applicant's time.
The petitions process at the PTO is a travesty. Considering how much publicity the BPAI backlog gets, it's a wonder that the petitions backlog, and the generally terrible work product of the PTO when it comes to deciding petitions, doesn't get more attention.
Petitions decisions need to be published. Not the mundane "form petitions" but substantive decisions decided under Rules 181, 182 and 183.
"Despite an outstanding drawing objection, the Examiner passed the application to issue when the BPAI reversed all rejections."
ReplyDeletePresumably, the Examiner's allowance instead of a Quayle action constitutes an inherent withdrawal of the objection.
"Presumably, the Examiner's allowance instead of a Quayle action constitutes an inherent withdrawal of the objection."
ReplyDeleteNo count for a Quayle. The count wh#res over there know that.
See this guy accidentally used the same trick as I've been using for B claims. First you note that they didn't show you everything in the claim, then you hit them with new matter when they try to. Although, admittedly, I'd probably drop the objection when they actually try to show it to me, even though I could uphold the objection I suppose.
ReplyDelete"Ultimately, the Examiner came to his/her senses and allowed the application, but not after time was wasted on all sides. "
You mean he was generous.
And just for the readers at home, the examiner WANTED a picture of a vehicle, without such a system in it, and a picture of the fuel cell not inside the vehicle and, I presume, off by itself. He makes that pretty clear in his objection for those with ears to hear, eyes to read and a brain to understand.
I swear to god, I don't know how you attorneys can be so lame as to not understand what it was that the examiner was wanting and the issues were that he was raising. They're simple as f.
I had an examinertard make a similar drawing objection in one of my cases. We had several drawings of a continuously variable transmission (CVT) and disclosed that it could be used in a vehicle. We had a dependent claim that recited a vehicle comprising the CVT of claim 1. So the examinertard objected (so tiresome and silly) and I submitted a drawing correction where I just put a rectangular box around the CVT in Fig. 1 and labelled it a vehicle.
ReplyDeleteThe drawing requirements of 37 CFR need revision. The only thing sillier than requiring an applicant to provide some "illustration" of a vehicle, as in this case where it adds nothing to the understanding of the invention, are the examinertards who make even sillier objections like the one made in this application. Patent offices that employ adults as examiners (e.g. EPO, JPO, IPONZ, IP Australia, etc.) don't have any silly requirements like this.
"And just for the readers at home, the examiner WANTED a picture of a vehicle, without such a system in it, and a picture of the fuel cell not inside the vehicle and, I presume, off by itself. He makes that pretty clear in his objection for those with ears to hear, eyes to read and a brain to understand."
I don't know where you got that ridiculous interpretation from the objection that was made. But then again, you are the chief tard of the examinertards.
"I had an examinertard make a similar drawing objection in one of my cases. We had several drawings of a continuously variable transmission (CVT) and disclosed that it could be used in a vehicle. We had a dependent claim that recited a vehicle comprising the CVT of claim 1. So the examinertard objected (so tiresome and silly) and I submitted a drawing correction where I just put a rectangular box around the CVT in Fig. 1 and labelled it a vehicle."
ReplyDeleteMeh, should have given you a new matter rejection like in this case. Just cause you're an arse.
"
The drawing requirements of 37 CFR need revision. The only thing sillier than requiring an applicant to provide some "illustration" of a vehicle, as in this case where it adds nothing to the understanding of the invention, are the examinertards who make even sillier objections like the one made in this application. Patent offices that employ adults as examiners (e.g. EPO, JPO, IPONZ, IP Australia, etc.) don't have any silly requirements like this."
It helps us make 102's to people claiming whatever sht you were dealing with specifically in cars later down the road tho. We're not supposed to use subject matter directly from claims for "ordinary" rejection. So, I'm all for it.
"I don't know where you got that ridiculous interpretation from the objection that was made"
That's because you are re tarded and your reading skills quite limited.
"We're not supposed to use subject matter directly from claims for 'ordinary' rejection."
ReplyDeleteHuh? What is an "ordinary" rejection? Is it different from the usually sh!tty rejections issued by the examinertards?
"And just for the readers at home, the examiner WANTED a picture of a vehicle, without such a system in it, and a picture of the fuel cell not inside the vehicle and, I presume, off by itself."
ReplyDeleteNo ... the Examiner wrote "the 'fuel cell' and 'vehicle' must be shown or the feature(s) canceled from the claim(s)." Nothing about a vehicle WITHOUT SUCH A SYSTEM IN IT or a picture of the fuel cell NOT INSIDE THE VEHICLE. Well ... that is why my eyes for reading showed me.
"Just cause you're an arse."
Yeah ... who cares about the law when you are 6. 6 doesn't like you and he'll throw a couple stupid rejections your way. Some kind of "professional" you are. Do you realize that NOBODY respects you (or your opinions) when you admit to being unprofessional?
"as to not understand what it was that the examiner was wanting and the issues were that he was raising."
If what the Examiner was really asking for was what you said it was, it would have taken the Examiner another 10 words to make that point perfectly clear. I know, I know ... there is a contest at the USPTO as to who can write the least (i.e., not including claim language or directs quotes from prior art) in an Office Action, but it doesn't hurt to throw in a couple of extra words in your objections/rejections.
"It helps us make 102's to people claiming whatever sht you were dealing."
Sorry, applications are written for those skilled in the art and to meet the 1st paragraph of 35 USC 112 -- not for examiners wanting to more easily reject something down the road.
"Huh? What is an "ordinary" rejection? Is it different from the usually sh!tty rejections issued by the examinertards? "
ReplyDeleteThere's "ordinary" and non-statutory double patenting, among others.
"No ... the Examiner wrote "the 'fuel cell' and 'vehicle' must be shown or the feature(s) canceled from the claim(s)." Nothing about a vehicle WITHOUT SUCH A SYSTEM IN IT or a picture of the fuel cell NOT INSIDE THE VEHICLE."
ReplyDeleteOnly to the untrained eye, tard. Specifically, your un-trained eye and other un-trained eyes. Look at it from the perspective of the examiner, tard. I know you have limited empathy, because you are a tard, but try.
"Yeah ... who cares about the law when you are 6."
Exactly. Ordinarily we let some things slide... but we don't have to. You're right though, we should totally not let those things slide, we're bad professionals for doing that. But on the other hand, even the attorneytards think this part of the lawl or rules needs amending to be less rigorous, so meh.
"Do you realize that NOBODY respects you (or your opinions) when you admit to being unprofessional?"
I know they don't respect you dude. Me on the other hand, they respect pretty well. Because I hold their hand through things incomprehensible to them otherwise.
"If what the Examiner was really asking for was what you said it was, it would have taken the Examiner another 10 words to make that point perfectly clear."
What can we say? We're lazy and busy. We don't have all day to di ck around with your formalities. He put the applicant on notice of the objection sufficiently for applicant to resolve the issue without adding new matter.
"I know, I know ... there is a contest at the USPTO as to who can write the leas"
It's called being lazy.
Bottom line, I've had similar issues happen, and the good attorneys know what to do, the so-so ones don't. This is just one of many thousand issues that separate the men from the boy attorneys.
"Sorry, applications are written for those skilled in the art and to meet the 1st paragraph of 35 USC 112 -- not for examiners wanting to more easily reject something down the road. "
Lulz, that's not what the drawing regs say. Gl try again.
"Only to the untrained eye, tard. Specifically, your un-trained eye and other un-trained eyes."
ReplyDeleteIf the Examiner's request requires a "trained eye" to be interpreted, then that request is ambiguous.
"I know they don't respect you dude. Me on the other hand, they respect pretty well."
My paychecks pays me a lot more respect at the end of the month than yours. Also, I don't see too many people on this board (or others) jumping to support your opinions.
"We're lazy"
Bingo -- also, another way of saying "we don't want to do our job properly." At least you admit that.
"Because I hold their hand through things incomprehensible to them otherwise."
Much of what you write in incomprehensible, so I understand. That's OK, you aren't alone. I just reviewed an action this morning in which the Examiner doesn't understand what a paragraph is used for. I thought they taught basic writing skills in 5th or 6th grade.
6tard is exhibit A in the case against the Dufas-Doll administration reign of terror. He's been brainwashed with a hatred of patent applicants and the patent bar. He's one of thousands of such useless examiners. They will unfortunately be with us for a very long time. Heaven knows they have nowhere else to go.
ReplyDelete>Presumably, the Examiner's allowance instead
ReplyDelete>of a Quayle action constitutes an inherent
>withdrawal of the objection.
If your point is that a practitioner could infer that the objection has been withdrawn, sure, I agree. Even so, I believe all parties (and the public as well) benefit when the record is clear.
If your point is that the absence of a clear withdrawal of the objection couldn't possibly harm that patentee's rights ... I dunno. I can see a litigator trying to make an issue out of this. He's not gonna win, but I'd prefer that the record be clear so that there's nothing to argue over in the first place.
>I submitted a drawing correction where I just
ReplyDelete>put a rectangular box around the CVT in Fig.
>1 and labelled it a vehicle.
Yeah, that's what I had in mind when I said
"the Applicant would have been better off with an amended drawing that looked even more like a black box".
You're right that it adds absolutely nothing to the understanding of the claims / invention / application.
But as long as 1.78 stands, I think we're stuck with wasting time and money in order to comply whenever an Examiner is a stickler for 1.78.
"Bingo -- also, another way of saying "we don't want to do our job properly." At least you admit that."
ReplyDeleteI don't admit that tard, "properly" is in the eye of the beholder. Perhaps it is entirely appropriate for us to disregard formalities where it seems they don't amount to a hill of beans... like in the instance of someone who tried to put his system into a car in a picture. And to be sure, I think it's kind of our discretion whether to object or not. It's one of our leet powers. Which you are jealous of.
"He's been brainwashed with a hatred of patent applicants and the patent bar."
OMG I'm brainwashed halp halp!
No, ya tard I know the good attorneys from the bad, and I also recognize when the bad ones take a step towards growing to be a good one, that's not brainwashing.
"I can see a litigator trying to make an issue out of this"
How, prey tell naive little Karen is a litigator going to make an issue out of the PTO deciding it no longer wishes to object to the application?
"But as long as 1.78 stands, I think we're stuck with wasting time and money in order to comply whenever an Examiner is a stickler for 1.78. "
See even Karen acknowledges that it's really a matter of being a stickler for the rules or not.
It has nothing to do with anything else, unless you're like me trying to use this trap to kill b claims.
"That's OK, you aren't alone. I just reviewed an action this morning in which the Examiner doesn't understand what a paragraph is used for."
Lulz, not using paragraphs in the body of the specific rejections is a good thing. It took me a long time to learn that.
"How, prey tell naive little Karen is a litigator going to make an issue out of the PTO deciding it no longer wishes to object to the application?"
ReplyDeleteBy making the usual BS argument that litigators make: the examiners are overworked and underpaid and don't have enough time to do the job correctly.
Maybe the patentee can submit your hundreds of blog posts every day to counter that argument. Of course, as those posts demonstrate your complete ignorance of the law, such evidence would be a double edged sword.
"Maybe the patentee can submit your hundreds of blog posts every day to counter that argument."
ReplyDeleteHe might also note how late my comments are often posted though and shoot himself in the foot. I rarely post from home.
I don't see how an argument about us being overworked has any relevance to the substance of a litigation. The USSC just gave you a bullet proofing for your presumption o validity.
"I don't see how an argument about us being overworked has any relevance to the substance of a litigation."
ReplyDeleteOf course you don't.
"If your point is that a practitioner could infer that the objection has been withdrawn, sure, I agree. Even so, I believe all parties (and the public as well) benefit when the record is clear."
ReplyDeleteYes, the record should be clear but, no matter how many times you point out to an Examiner during the course of a prosecution that they have not explicitly indicated that the drawing changes made in response to an objection have been accepted, you may get no response other than the Notice of Allowance. The record is clear that I requested the Examiner to acknowledge the acceptance of the drawing changes several times. Getting the Allowance instead of the Quayle is the closest I got to an explicit response and no one can argue that the examiner wasn't aware of what was going on.
>Yes, the record should be clear but, you may
ReplyDelete>get no response other than the Notice
>of Allowance ...
>[a NoA means] no one can argue that the
>examiner wasn't aware of what was going on.
Gotcha. Sounds like we both agree that a paper from the Examiner withdrawing the objection is best. I also agree that the NoA implicitly withdraws the objection so it can't come back to haunt the patentee.