Patent prosecution for so-called “simple” mechanical devices is never as easy as it looks. The pitfalls are many and varied, and the Office should win creative writing awards for their so-called reasonable interpretations.
One pitfall is that the words in the specification almost never are sufficient to describe every aspect shown in the drawings. The notion that a picture is worth a thousand words is woefully inadequate in most cases. And because the drafter often never knows the prior art that the Office will apply, and with what interpretation of the claim elements, the idea that the draft should always make sure to describe the “important” mechanical features, while ideally correct, is generally unobtainable.
That is why many times the patent professional tries to use disclosure shown in the figures to support a claim amendment. One major obstacle with this approach is that many examiners refuse to accept features from the drawings that are not verbatim also in the text under the theory of Hockerson. See MPEP 2125, which refers to drawings as prior art, but which is used by examiners to reject amendments as lacking proper support:
II. PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF ACTUAL PROPORTIONS WHEN DRAWINGS ARE NOT TO SCALE
When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue."). However, the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977) ("We disagree with the Solicitor’s conclusion, reached by a comparison of the relative dimensions of appellant’s and Bauer’s [the reference's] drawing figures, that Bauer ‘clearly points to the use of a chime length of roughly 1/2 to 1 inch for a whiskey barrel.’ This ignores the fact that Bauer does not disclose that his drawings are to scale. ... However, we agree with the Solicitor that Bauer’s teaching that whiskey losses are influenced by the distance the liquor needs to ‘traverse the pores of the wood’ (albeit in reference to the thickness of the barrelhead)" would have suggested the desirability of an increased chime length to one of ordinary skill in the art bent on further reducing whiskey losses." 569 F.2d at 1127, 193 USPQ at 335-36.).
Thus, it can be helpful for the specification to state that drawings show relative dimensions and positioning, or that they are to scale, when such drawings are used. Yet often a specification has no such helpful statement and the applicant nevertheless wants to rely on a feature shown by the drawing but not explicitly described. When can such an approach be successful? While there are various examples of the applicant failing in this endeavor, there are examples where the applicant overcomes the rejection. This post illustrates a recent example in Appeal 2021-005169, Application 15/821,194.
The invention relates to a continuous positive airway pressure (“CPAP”) mask which incorporates adhesive to attach to a user.
Claim 13 recites (emphasis added):
13. A system for delivering pressurized airflow comprising:
a flow generator configured to output a pressurized airflow;
a conduit in fluid communication with the flow generator;
a mask in fluid communication with the conduit;
wherein the conduit is configured to deliver the pressurized airflow from the flow generator to the mask;
the mask comprising:
a central portion;
an aperture configured to receive the conduit;
a wing projecting from the central portion, the wing configured to adhere to a patient’s cheek, wherein the wing is at least partially provided by an adhesive material, and wherein the wing is substantially crescent-shaped such that a height of the wing is greater than a width of the wing;
wherein the wing and central portion are molded together such that the adhesive material is provided integral with the mask; and
wherein the central portion is configured to surround a patient’s nose such that the mask is configured
to deliver pressurized airflow to the patient’s airways by delivering pressurized airflow into at least the patient’s nostrils.
The examiner argued that the underlined feature was not supported by the specification. The applicant pointed to FIG. 1 (reproduced below) which showed various heights and widths, but did not explicitly state their relative sizes. Further, the specification had no statement that the drawing was to scale. The examiner maintained that the Figure alone could not support the claimed feature, and cited to the MPEP.
The PTAB found that the figure was sufficient in this case. In particular, the PTAB addressed the citation in the MPEP, and noted that the case was directed to claiming “specific sizes” which was not the applicable here (because the claim recited relative sizes). From the decision:
Appellant’s Figure 1, reproduced above, shows mask 20 having central portion 22 and wings 24A, 24B. Spec. ¶14. It can be readily seen that the height of wing 24B (HW) is clearly greater than the maximum width of the same wing (WW). The Examiner responds that “when the reference does not
disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.” Ans. 5 (citing Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)). The precise language of the most relevant excerpt from Hockerson holds “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Id. Hockerson does not control here. First, Appellant is not claiming “particular sizes” but rather a relationship between one size (wing height) and another (wing width). Further, the Specification is not silent about the relationship between wing height and wing width. Rather, that relationship, whereby “a height of the wing is greater than a width of the wing” as recited in claim 13, is adequately disclosed in the illustration of Figure 1, as aided
by the bars designated “HW” and “WW.”
This results is of particular note as many examiners hold steadfast to 112 rejections where the applicant relies on relative features in the figures but without a statement in the specification that the figures are to scale. While it surely helped that the figures labeled the height and width, that does not appear to be the central basis of the decision.
So, when you need an amendment only supported by the figures, finding a way to do so without claiming “particular sizes” may be a route to consider even if the figures are not stated as being to scale.