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Claims Vs Drawings

Posted by Anonymous . updated on 2/26/2009
Hi,

The Examiner has objected to drawings under 37 CFR 1.83(a) in my office action. ?He comments that the drawings must show every feature of the invention specified in the claims.

Is it applicable to dependent claims also?

Actually the patent application does not have any flowchart (only block diagrams are present) and the principal independent claim is a method claim. The examiner is asking us to show the limitations of the dependent claims in the drawings as well.

Do I need to prepare a separate flowchart incorporating all the steps of the independent and dependent method claims? Also, Do i need to write the description for the new flowchart in the spec?

Regards.

Answers (12)
 
TataBox...
Yes, the drawings in a nonprovisional application must show every feature of the invention specified in the claims.  This includes dependent claims as well.

Why cant you include a flowchart that encompasses the independent and dependent claims?   If you have to make a new flowchart for both then the application would "flow"properly if you described the new flowchart in the spec, as opposed to the independents in one area and the dependents in another.
 
 
JimIvey
Quote
Yes, the drawings in a nonprovisional application must show every feature of the invention specified in the claims.  This includes dependent claims as well.

I know that's the rule, but I think it's wrong.  How could we ever get patents with no drawings at all?  It happens.  My understanding is that drawings are entirely optional, except perhaps to the extent "necessary" for understanding of the invention.  

So, if I understand the position of the examiner (and I've seen those stupid rejections too) and if I want to claim "wherein the sorting comprises performing a bubble sort", I have to show a bubble sort in my drawings? ... that without a bubble sort in my drawings, no ordinary software engineer could possibly understand what I mean by "bubble sort"?

Sidebar:  for those unfamiliar with software engineering, a bubble sort is the most simple of all sort mechanisms and used to be 1st semester material.  I'm betting they cover bubble sorts in elementary school now. ... end sidebar.

Then, I put a box on the drawings and write in the box, "bubble sort module".  Now, magically, the entire community of ordinary software engineers lets loose a collective "Aha!" -- now they understand!  

Ridiculous.

Regards.
 
 
ram
I am going to write description for my flowchart. But having some problem with the terms used in the current claims. While my pending claims use ".....indicator", the spec uses different corresponding terms like ".......measurement", "......value", ".......quality" etc to recite the same term. Have to be careful while writing the description for my new flowchart. Most of the terms used in my pending claims are not explicitly present in the spec.

But the Examiner has not objected to the term "...indicator", although the same term is not present in the spec. Can I just add all the claims in the form of flowchart and put it in the spec.

Regards.
 
 
Isaac
Quote
But the Examiner has not objected to the term "...indicator", although the same term is not present in the spec. Can I just add all the claims in the form of flowchart and put it in the spec.

Regards.


Assuming that the claims as originally filed included the text, you should be able to do this.

 
 
JimIvey
It may be late to point this out, but it's not really good form to give the same thing 4 different names.  You should pick one and stick to it.  

And, if I understand you correctly, you're going to amend the spec to include language used in the claim.  While I trust Isaac that it's okay to do that (and I believe it is), I typically go the other way -- amend the claims to use the language I used in the spec.  There's less of a question as to "new matter" that way.

However, I suppose amending the spec rather than the claims arguably avoids Festo.  To what degree that really matters these days is unclear to me.

Regards.
 
 
ram
Jim/Isaac,

After researching again, I think this strategy (adding new flowchart and amending spec) may create some problem later (new matter etc. - because of the inconsistency terms used in the spec).

I read the MPEP 608.02(d) which provides ?The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).?

The above clearly states that conventional features can be illustrated in form of a graphical drawing symbol. I already have a architecture diagram and a block diagram illustrating the components of nodes like processor etc. I think - ?one of ordinary skilled in the art should easily understand which component performs which steps of the method claims, while the spec clearly explains the steps of the method claims from the perspective of the node. So I am just going to clarify the examiner that a new figure is not needed in the present case.
 
 
ram
Further researching on this issue,

MPEP 601.01(f) provides "It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 USC 113 (first sentence).......other situations in whch drawings are usually not considered necessary for the understanding of the invention under 35 USC 113 are......(A) coated articles or products..........(B)Articles made from a particular material or composition.............(D)......"

I think, therefore, there is no need for flowchart to include stupid text boxes to recite functional steps.

Regards.
 
 
Isaac
Quote
Jim/Isaac,

After researching again, I think this strategy (adding new flowchart and amending spec) may create some problem later (new matter etc. - because of the inconsistency terms used in the spec).


The claims are part of the spec so adding claim text to a drawing shouldn't result in a new matter rejection/objection.  See MPEP 2163.0.

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2163_06.htm

Alternatively, if the terms in the current description can be put in a flow chart, then amending the claims shouldn't result in new matter and would eliminate any inconsistent terminology problem.

But I couldn't really recommend either approach without spending at least a little time with your application.   It's also possible that your argument that the drawings are unnecessary might work, but that also depends on what you've said about the process in your specification.

Maybe try the argument first and then try making flow charts if you cannot persuade the examiner.   Remember that as long as you get an objection and no rejection, your relief is to petition the supervisor and not to appeal to the BPAI.

 
 
SoCalAt...
608.02 Drawing [R-3]

35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter to be patented.

I take this to mean drawings are not mandatory with every application. Granted, if the application admits to a drawing it had better be there or if a drawing is needed to understand the invention it had better be there.
 
 
Don Shu...
Thus you are assuming "bubble sort" will be a term that even layman will fully understand in 50 years.  I go for the drawing aspect in that the terms tend to be less ambiguous.  But then i'm prejudice because I prepare the drawings.
 
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