Use of Drawings in the patent application
Many people receive Office Actions with the examiner objecting about the claim elements not being present in the drawings.
Bad drafting – yes, but whats the solution?
- Modify the drawings and include the elements objected by the examiner
- Respond and try to explain to the examiner that drawing is not necessary
Let’s analyze the facts.
The section corresponding to drawings in the MPEP states that:
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).”
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)……”
35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter to be patented.
This implies that the drawings are not always necessary.
Therefore, the best option would be the option II to try to convince the examiner that the drawing for the claim element is not necessary. As far as the claim element is very well known and its functionality and definition can be well understood from the specifications it is not necessary to represent the element in the drawings.
The examiner doesn’t agrees to it then the second best option is to provide him with additional drawings including the claim elements.
Now considering the worst case, the claim elements have not been described in the description!!
The next option should not be to amend the specs, which could be done though, but that may bring out the concept of ‘new matter’. The better option would be to amend the the claims and try to use the terminologies in the claims that have been used in the specs to describe the elements.