Examples of abandonment after failure to handle drawing requirement

In this post, I'll discuss some applications that went abandoned because the Applicant didn't properly handle drawing objections or requirement that occurred at the last stage of prosecution. The takeaway I see here is that even if you disagree with the drawing requirement/objection itself, or with the PTO's handling of something, you can't just ignore it. You should instead respond as required, and if you think the Examiner is wrong, handle it via petition, as required by the rules. And yeah, fighting it always means extra effort and sometimes real money (EOT fees, petition fees). But those are the rules. 

Application 11/776,390 (history available on Public PAIR) went into appeal with several drawing objections present in the last Office Action before appeal. The Board reversed the Examiner's rejection of one independent claim, and the Applicant filed an RCE to take the allowable subject matter. However, the Applicant did not address the outstanding drawing objections in this reply. The Examiner sent a Notice of Abandonment and indicated that the RCE was improper and thus "any time period running was not tolled by the filing of the improper request." The Applicant's reply "did not address the outstanding objection in the Miscellaneous Action mailed 11/15/2013, as required, and therefore is improper."

Application 11/461,132 (history available on Public PAIR) received a Notice of Allowance, but the Examiner's Notice of Allowability indicated outstanding issues with the drawings. The summary sheet of the Notice of Allowability checked the box "Corrected Drawings must be submitted, including changes required by the attached Examiner's Comment." The Detailed Action explained that formal drawings in compliance with 37 CFR 1.121(d) were required because the originally filed drawings "are not formal (i.e, uniformly thick numbers and lines, etc.)." The PTO sent a Notice of Abandonment after the Applicant paid the issue fee but did not submit new drawings. 

In Application 11/461,084 (history available on Public PAIR) , the very first Examiner communication was an Ex Parte Quayle Action indicating all original claims were allowable. However, no drawings were filed with the application, and the Action also required the Applicant to submit a drawing since "the subject matter admits of illustration by a drawing." Two months after the Ex parte Quayle Action, the Examiner sent a Notice of Abandonment, indicating a failure to reply to the Ex parte Quayle Action. Two weeks later, the Applicant filed a Petition to Withdraw the Holding of Abandonment, arguing that extensions of time under 1.136 were available for an Ex parte Quayle Action, so that the application was not in fact abandoned at the two-month mark. The Petition also requested that that the period for reply to the Action be reset "in order to place the Applicant in substantially the same position as he was when this Petition was filed." Notably, the Applicant did not submit the drawings along with this Petition. The Petition Decision withdrew the holding of Abandonment, but did not reset the reply period. With no drawings submitted and the clock on the Ex parte Quayle still running, the Applicant filed a 3-month extension of time with a Response arguing that no drawings were necessary. The Examiner withdrew the drawings requirement and issued a Notice of Allowance.

In Design Application 29/356,231 (history available on Public PAIR), the Applicant filed a Preliminary Amendment about six weeks after filing to amend the drawings "to provide proper indication, in Fig. 1, of the longitudinal sectional view show in Fig. 2." Only four days after those drawings were filed, the Examiner sent a Notice of Allowance. The Notice of Allowability indicated that "corrected drawings must be submitted including changes described in the attached Examiner's Amendment/Comment."  In that attachment, the Examiner indicated that the drawings were objected to because Fig. 7 cross-sectional view wasn't referenced in any other figure. "That is, there are no directional arrows with numerals at the end that shows from which the view is cut."  The Applicant paid the Issue Fee but did not file drawings in response to Notice. The PTO sent a Notice of Abandonment, which the Applicant petitioned. In the Petition, the Applicant pointed out that drawings addressing the objection were in fact filed, four days before the Examiner's action. The Petition Decision upheld the abandonment, noting that the Notice of Allowance "clearly required drawings" and that the Applicant did not file a reply to this Notice as required by the statute. 

The Applicant filed a Request for Reconsideration arguing that the drawings did in fact comply with the outstanding requirement, and it was irrelevant that this submission was made before the Notice. However, the Petitions Office maintained its position, explaining that "it is clear that the Examiner made a requirement for drawings after these drawings [in the Preliminary Amendment] would have become part of the official application." The Applicant then revived the application for unintentional abandonment, including the drawings with the revival petition, and the patent issued.

Applicant wins petition and avoids labeling figure as prior art

Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision  January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."

Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.)  Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

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.

Applicant caught between inconsistent BPAI Decision and Petition Decision

Takeaway: The Examiner objected to originally filed drawings in the first Office Action on the merits (mailed in 2004), and the Applicant is still fighting the very same objection in 2011 – even after winning at the BPAI on the prior art rejections! What's worse, the Applicant is now caught between inconsistent direction from the PTO: the BPAI Decision said to petition the objections and the Petition Decision said to appeal the objections. The Applicant has now filed a Renewed Petition which explains this inconsistency. If the Applicant loses this time, the only recourse is to file a suit in district court. (Application of Frye, Appl. 10/790,923.)

Details:

Application of Frye
Application 10/790,923
Technology Center 3700

Frye's filed a patent application for a shoe in 2004. The first Office Action on the merits included two § 1.83(a) drawing objections:

The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the midsole(s) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.The drawings are objected to because the specification states that 824 is a point at 1/2 the length of the shoe, however the point at 824 in figure 14 appears to be clearly in the forefoot portion of the shoe, this is confusing.
(Emphasis added.) 

The originally filed spec referred to a midsole, but did not use a reference number. So the Applicant responded by amending the spec and drawings to add reference number 829. The drawing amendment looked like this:

The Examiner was not satisfied. In the first Final Office Action he maintained the two drawing objections and also indicated that the drawing contained new matter:

These drawings are not entered because they contain new matter, i.e. the thickness, shape, exact location, etc. of the midsole is considered to be new matter.
(Emphasis added.)

The Applicant filed an RCE with claim amendments to address prior art rejections and also argued against the new matter objection. The Applicant addressed the second drawing objection ("824 points to the forefoot") by explaining that line 824 had been "repositioned so that it coincides with the midpoint of the sole." The Applicant traversed the new matter objection by pointing to specific sections of the specification to show support for "midsole."

The Examiner maintained all three objections. Later in prosecution, the Applicant argued that a midsole is known to a POSITA and is thus not new matter:

Moreover, midsoles are well known by those of skill in the art as shown in the various prior art documents submitted by Applicant and cited by the Examiner and as taken by the Examiner as Official Notice, in the Office Action. No unusual features have been attributed to the midsole provided in FIGURE 14 and described in Applicant's specification.
(Emphasis added.)

The Examiner did not respond to this particular argument.

The Applicant filed seven more responses and amendments dealing with prior art rejections before appealing, but no progress was made on the objections. In addition to the prior art rejections, the Appeal Brief addressed the drawing and new matter objections (repeating the arguments already on record).

In the appeal decision (Ex parte Frye), the Board reversed all the prior art rejections. The Board did not reach the drawing and new matter objections. Instead, the Board noted that objections are petitionable matters, and chastised the Applicant for not dealing with this sooner:

In general, since petitions should be made within two months of the mailing date of the action or notice from which relief is requested, 37 C.F.R. § 1.181(f), petitionable matters should be addressed before an appeal reaches the Board. In the present case, it would have been desirable for the Appellant to have resolved the objections to the drawings and refusal to enter proposed drawing amendments by petition prior to the matter reaching the Board.

When the application (with all rejections reversed) was returned to the Examiner, the Examiner issued an Ex parte Quayle Action maintaining the drawing and new matter rejections. The Applicant filed two more responses with the same drawings and the same arguments traversing the objections. Finally, in April 2011, the Applicant filed a Petition on the new matter and drawing objections, and simultaneously filed an RCE (but no claim amendments).

After the petition was filed, but before a petition decision was issued, the Examiner issued another Office Action in response to the RCE. This Office Action maintained the drawing objection but withdrew the new matter objection in favor of an enablement rejection:

The specification and drawings are confusing and inconsistent and therefore do not provide adequate basis to enable one of ordinary skill in the art to make the claimed shoe becuase it is not clear where the location of point 824 is to be located. The specification states "approximately 1/2 the length" however the drawings clearly show such a location to be in the forefoot of the footwear. One of ordinary skill in the art would not be able to determine which location is appropriate for the invention. Also the drawings do not show a midsole and one of ordinary skill in the art would not know what thickness, shape, exact location etc. would be appropriate. Therefore the specification lacks enablement for a midsole or the location of the point which the forward toe section of constant thickness of the insole meets the heel section of the insole with a decreasing thickness.

The Petition, which handled by the Technology Center Director, was dismissed on the grounds that the drawing objection was related to the enablement rejection and thus should be handled by the BPAI:

A review of the record indicates that the drawing objection and claim rejection are directed to the same issues. ...  [T]he correctness of the examiner's drawing objection, resting on the lack of clarity of the claimed the location of point 824 of midsole, is dependent on the correctness' of the examiner's 35 USC 112 first paragraph rejection of claims based on the original specification. It is the policy of the USPTO in appropriate circumstances to decline to rule on a petitionable issue, when, as here, that an issue is also determinative of a  rejection, and as such, is appropriate for consideration on appeal to the BP AI. In this case, the issue in the objection and rejection, as here, additionally and necessarily requires the exercise of technical skill and legal judgment in order to evaluate the facts presented, the issue is properly decided on the merits, and is properly reviewed on appeal, not petition. Under the circumstances, it is believed that the issues presented under the claim rejections and drawing objection in the instant case require the same review by the BPAI. Thus, this issue is appealable and should not be decided by petition.
(Emphasis added.)

On July 5, 2011, the Applicant filed Renewed Petition explaining that the Petition Decision was inconsistent with the BPAI's decision:

The Board invited Applicant to pursue this issue through petition and have this issue addressed before an appeal reaches the Board. The Board is stating that this issue is to be resolved by petition. See Decision on Appeal, page 18, lines 15-21.Thus, Applicant is caught in an endless loop where the issue is passed off from the Board to the Director and now apparently is to be passed backed to the Board which stated that the issue was not within its jurisdiction and thus not appealable. As a result, Applicant respectfully requests the Director to decide this issue pursuant to this Renewed Petition.

 My two cents: Petitions are generally useless to Applicants because a petition doesn't stop the 6-month statutory clock and petition decisions often take months if not years. Not true here, as the decision took only about 6 weeks. This case highlights a second problem with the petition process  – the confusion between issues that are appealable and issues that are petitionable, which can catch the Applicant in "an endless loop" between the two entities.

Technically, there is no endless loop. Technically, the BPAI decision and the Petition decision are not inconsistent, because they were deciding two different issues. The Petition considered an enablement rejection that wasn't present when the Applicant petitioned, because the landscape changed between the time the petition was filed and the time the petition was decided. That is, the Applicant petitioned the new matter and drawing objections (Office Action mailed September 22, 2010), but by the time the petition was decided the new matter objection had disappeared in favor of an enablement rejection (Office Action mailed April 21, 2011).

Still, this mere technicality has huge consequences for the Applicant. If the Director doesn't have mercy on the Applicant in the Renewed Petition, the Applicant is forced into a second appeal, which will take years.

On a comletely different note, the Applicant's behavior here simply baffles me. The Applicant waited seven years to file a petition which should have been filed after the first Final Office Action! Why did the Applicant continue to repeat the same argument over and over and over? Because he thought there was no penalty for doing so? Because he didn't know there was an alternative?

Maybe the Applicant was hoping that the objections would simply go away. I have seen a number of cases go to the Board with objections present, and when the BPAI decided in the Applicant's favor, the Examiner issued a Notice of Allowance. That is, the objection simply disappeared with no comment. But as this case shows, you're in trouble if the Examiner maintains the objection even when the claims are otherwise allowable. So after what happened here in Frye, perhaps Applicants should consider filing petitions more often, at least when it's clear that the Examiner is entrenched in his position.

I also wonder if the Applicant dodged a bullet here by waiting so long to file the petition. Rule 1.181 says that petitions that are not "filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely." It's not clear to me whether the action from which relief is requested is the very first Office Action in which the objection is raised, or whether it's the latest action maintaining the objection. I'd like it to be the latter, since that's more lenient for Applicants. Yet if the two month time period renews every time you get an Office Action, I don't really see the point of a two month time period, since that would allow me to wait (almost) indefinitely to file a petition.

It would have been nice if the Examiner had issued an enablement rejection from the start rather than new matter. The Board would have decided the issue, and that would be that. On the other hand, the Applicant did amend the spec, so this might be one of rare cases where a new matter objection is appropriate. This case illustrates why you don't want to amend the spec to add literal support for your claims: it's easier to appeal an enablement rejection than to petition a new matter rejection.

"Antecedent basis" spec objection vs. 112 First claim rejection

When you make a claim amendment that the Examiner believes is not "supported" by the specification, the typical result is a rejection under §112 ¶1. However, every once in a while the Examiner will handle this situation with an objection to the specification under 1.75(d)(1), which requires the claims to have antecedent basis in the specification. Sometimes the Examiner will combine this with a §112 ¶1 rejection.

Though I've only encountered this type of objection to the specification a few times, my arguments are basically the same no matter whether the Examiner applies a claim rejection or a spec objection. However, there is a big difference in how you proceed if the Examiner isn't persuaded by your arguments:

• a rejection is appealable;
• an objection alone is petitionable; and
• an objection in combination with a §112 ¶1 rejection becomes appealable.
  (See MPEP 2163.06.II.) 

Therefore, if you're dealing with both, and you end up appealing, seems like you might as well ask the Board to decide the objection also. That means listing the objection to the specification as a grounds for appeal in your Brief, and providing arguments why the spec does provide antecedent basis.

If you have an objection without a §112 ¶1 rejection, and you're appealing on other grounds, I see several options.

• You can petition the objection concurrently with the appeal. 
• You can petition the objection after the decision on appeal.
• You can wait for the decision on appeal, and hope the objection simply goes away!
  I found several cases in PAIR where the Applicant won an appeal on prior art rejections, and the Examiner issued a Notice of Allowance without explicitly withdrawing the spec objection. (See, e.g., Serial Nos. 10/329,617; 10/010,337; 09/325,944.) Perhaps when a spec objection is the only thing standing between the Examiner and a count for Notice of Allowance, the Examiner had second thoughts about the objection.