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.
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."
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.