Applicant loses drawing objection petition because new matter introduced by showing relative locations of claimed elements

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."


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.

What if you don't provide support for claim amendments? (Part III)

Earlier I posted about why I don't think Applicants are required to identify support in the specification when making claim amendments (here) and then about why I sometimes choose to do so anyway (here).

What can happen if you don't provide support for claim amendments?

You're definitely risking a rejection under §112 ¶1. (Either enablement or written description; Examiners seem to use them interchangeably.) If that happens, I bite the bullet and write a response to the rejection, in which I point to support in the specification. In this scenario, where I took a risk and lost, I don't see this as a high price to pay. It probably takes me about the same amount of time to respond to the rejection as it would to preemptively provide the information at the time of amendment. [For another blog post on the subject of responding to §112 enablement rejections, I recommend this Patentably Defined post here.]

You should also be aware of the possibility that something worse could happen. I've heard a few horror stories where the Examiner deemed a response to be "non-responsive" for not pointing to support for claim amendments. In such case, the MPEP gives the Examiner wide latitude on much trouble he/she can cause. (See MPEP 714.03.) Depending on now "serious" the Examiner finds your omission, and whether or not the Examiner finds your response to be "bona fide" or not, the Examiner may:

• note the deficiency and send out the Office Action again; 
• notify you of non-responsiveness and keep the clock running on the original statutory time period; or
• notify you of non-responsiveness and give you a new 1-month time period.

Identifying support in the specification for amendments (Part II)

In a previous post (here), I explained why I don't think Applicants are required to identify support in the specification when making claim amendments. Personally, I don't generally identify support for claim amendments until challenged by the Examiner, because I believe that fewer statements in prosecution history are better than more. (All things being equal.)

Nonetheless, sometimes I do point to a portion of the specification when making a claim amendment. I use a sliding scale: with amendments that I suspect may trigger a §112 rejection, I am more likely to preemptively point to support in the specification. I point to as many areas of the specification (and drawings, if relevant) as possible, and use "wiggle language" stating that these aren't the only relevant portions.

This strategy don't-say-anything-until-forced-to strategy seems to work for me: I'd say far less than 10% of my amendments receive a §112 rejection. As with all things in patent prosecution, your mileage may vary.

Must you identify support for claim amendments? (Part I)

Here's a basic patent prosecution question: are you required to identify support in the specification when making claim amendments?

My answer to this question is: No, Applicants are not required to do so. One portion of the MPEP does baldly state that Applicants should identify support in the spec. [I'll get to that in a minute.] However, "should" is not "must", and that's why I say Applicants are not required to do so.

I'll go further and say that I don't think the MPEP, when read as a whole, even says that Applicants "should" do so. But I've talked to a number of practitioners who take the opposite position, so I in this post I'll explore reasons why I think this is a commonly held belief. In future posts, I'll discuss a) reasons for and against providing support for claim amendments even if not required, and b) what actions an Examiner is and is not entitled to take if you don't.

I think one reason might be confusion about the term "new matter." Technically, new matter refers to material added to the "disclosure" (specification, drawings, and abstract), not to the claims. So while MPEP § 2163.06 does state that "Applicant should therefore specifically point out the support for any amendments made to the disclosure," that doesn't apply to the claims. This section also explains the distinction between a new matter objection to the specification and a written description rejection of a claim.

The most obvious reason for holding that Applicants should identify support in the spec is this bald statement in MPEP § 2163.II.A:

There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96; however, with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.
(Emphasis added.)

As support for this "should" statement, MPEP 2163.II.A goes on to cite to other sections of the MPEP – which do not support its position:

...See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure.");
(Emphasis added.)

As noted above, § 2163.06 refers to the disclosure, not the claims. And although MPEP § 714.02 states (citing CFR § 1.111) that an Applicant is required to "point out the patentable novelty" and "how the amendments avoid such references or objections", it says nothing at all about pointing to support in the spec. Nor does the final cite in MPEP 2163.II.A support the position "should provide support for claim amendments" :

...and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.
(Emphasis added.)

This cite to MPEP § 2163.04 is not on point because it describes what the Examiner is required to do if the Applicant does point out support, not what the Applicant should or must do so.

Thus, I think the MPEP is inconsistent on this basic issue, and when read as a whole, does not even clearly say that Applicants "should" provide support for claim amendments.