Electric Fan and Lamp

by patentbar on August 16, 2007 · 42 comments

in Exam Questions

Does anyone have any more information regarding this question?

One question i got was that a practitioner files design patent app with a base connected to a fan connected to a lamp.

They are connected in their center. The drawing is shown as three saucers connected to each other.

Examiner finds reference with same design. Practitioner argues that the size of the saucers shown in the reference are not the same as that in his drawing.

I chose the answer where examiner must maintain the rejection because the scale of drawing doesnot have to be the same.

{ 42 comments… read them below or add one }

1 ytham05No Gravatar August 2, 2008 at 5:45 pm

Applicant provided specific measurements but the prior art does not. Specifically, the was “silent” as to the dimensions.

In MPEP 2125 Dawings as Prior Art,

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.”). …

Thus, the answer where examiner must maintain the rejection because the scale of drawing does not have to be the same is likely the best answer.

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2 patentbarNo Gravatar August 18, 2008 at 3:01 pm

From the forum: “I also got the electric fan question(deminsions adds little)”

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3 PatentbarNo Gravatar January 27, 2009 at 10:46 pm

1/27/09 – Had this question. The correct answer proposed above is not ver batim from MPEP, but I chose it anyway. Measurements are given for the application, but not the reference patent.

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4 anonymousNo Gravatar August 3, 2009 at 6:47 pm

I don’t think this has to do with scale in drawings, but rather with what effect size has in design applications. Size alone is not sufficient to distinguish the application over the prior art in the facts given above.

From MPEP 1504.01(c) – Lack of Ornamentality:
“A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a determination based on their ornamental contribution to the design as a whole.”

From MPEP 1404.01(d) – Simulation:
“The examiner must then evaluate this evidence in light of the design as a whole to decide if the claim is primarily ornamental. It is important to be aware that this determination is not based on the size or amount of the features identified as ornamental but rather on their influence on the overall appearance of the design.”

From MPEP 1504.01 – Statutory Subject Matter for Designs:
“35 U.S.C. 171. Patents for designs.
Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

The language “new, original and ornamental design for an article of manufacture” set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs:
(A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);
(B) a design for the shape or configuration of an article of manufacture; and
(C) a combination of the first two categories.”

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5 samboNo Gravatar September 12, 2009 at 10:49 am

Got this question yesterday and it was asking.. will the practitioners response be effective? and I chose the No: examiner should maintain the rejection because the scale of drawing doesnot have to be the same

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6 Emily M.No Gravatar February 13, 2010 at 9:43 pm

I got this also – previous poster was correct that the answer wasn’t verbatim from MPEP, but it was the only one that made sense. Basically that arguments about dimensions in a drawing adds little if disclosure does not talk about size.

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7 StephenNo Gravatar April 7, 2010 at 7:26 pm

Passed the exam today

Yes, I had this one too, not sure what the correct answer was, it was quite convoluted. In the question there was three parts to the fan with lamp and one other piece. The prior art had no mention of dimensions but the claim specifically mentions dimensions. I searched the mpep for “dimension” and found an interesting hit that seemed relevant and hoped for the best.

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8 SNo Gravatar June 5, 2010 at 6:37 am

I got this, and I think choice was verbatim

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9 SPNo Gravatar July 23, 2010 at 10:49 am

I saw this Q in the exam yesterday.

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10 AnneNo Gravatar January 19, 2011 at 4:02 pm

Got this one today.

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11 epepNo Gravatar March 7, 2011 at 11:45 am

Saw it. There were two wacky answers, one of which made me laugh. Something that made it sound like the agent/atty was nuts.

I think it was asked in the reverse. The agent/atty put the dimensions in, and then argued that the prior art didn’t have those dimensions and there was some functional difference (lamp obscures the fan, maybe?). I went with the answer that the argument wasn’t valid because you can’t infer that much about scale in the prior art.

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12 JohnNo Gravatar June 24, 2012 at 12:31 am

Difference in function does not support the unobviousness.
MPEP 1504.03 Nonobviousness [R-5] – 1500 Design Patents
When a claim is rejected under 35 U.S.C. 103(a) as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103(a) to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

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13 OverworkkedNo Gravatar April 28, 2011 at 1:30 pm

Saw question on test on 4/27/2011.

The answer I selected (solely based on advice from this forum without any MPEP research) was (approximately):

X. The practitioner has not overcome the obviousness rejection because of scale issues with the drawings.

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14 jacquiegardnerNo Gravatar May 3, 2011 at 7:08 pm

I got this question today too. I wished I had found this site before I took the exam! I agree with the answer that the scale of the drawing doesn’t get you anywhere (in short).

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15 BeckerNo Gravatar May 17, 2011 at 3:16 pm

I got this question 5/16/2011.

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16 SarahNo Gravatar May 18, 2011 at 4:08 pm

Got this question today 5/18/11.

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17 BigBadVoodoDaddyNo Gravatar July 3, 2011 at 1:48 pm

Verbatim from MPEP 2125
The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.

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.

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18 BigBadVoodoDaddyNo Gravatar July 18, 2011 at 12:11 am

Got the same question on jul 12th exam. answer is that scale does not matter.

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19 giaps2No Gravatar July 26, 2011 at 8:10 pm

Saw this question or a variant on 07/25/11.

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20 Top GunNo Gravatar July 28, 2011 at 11:15 am

had variant 7/26

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21 BobNo Gravatar August 3, 2011 at 2:03 am

Got this on 8/2/11

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22 TJLNo Gravatar August 18, 2011 at 11:44 pm

Got this 8/18.

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23 maggieNo Gravatar August 28, 2011 at 9:55 pm

Got this 8/24/11

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24 ntlNo Gravatar September 7, 2011 at 8:46 am

Got this one on 09/06/11.

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25 NickNo Gravatar September 7, 2011 at 5:02 pm

Got this one on 9/7/11. Answer is the scale doesn’t matter so rejection stands.

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26 patentgeekchickNo Gravatar September 22, 2011 at 8:37 pm

Got this! 9.22.11

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27 KenNo Gravatar October 9, 2011 at 8:05 am

Got it 10/8. Loved the feeling of just clicking the answer and moving on to the next question.

Study everything on this site if you want to pass without much difficulty!!

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28 BethanyNo Gravatar October 22, 2011 at 5:56 pm

Got it 10/22/11

Passed because of this site!

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29 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:37 pm

4/6/2012

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30 GDBNo Gravatar April 19, 2012 at 7:12 pm

Got this on 04/19/12

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31 TomNo Gravatar May 17, 2012 at 2:27 am

Had this one a few months ago (01.12.2012)

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32 LaurenNo Gravatar May 24, 2012 at 11:56 am

Got this 5/23 – was running out of time so I chose the answer about non-scale drawings being of little consequence. Passed!

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33 passedatlastNo Gravatar June 19, 2012 at 5:46 pm

My question 6/19/12 involved Practitioner files application X for a fan/lamp/something combination, where the 3 items are parallel circles or something. Claim is rejected under 103 because patent Y, which discloses the combination of these three things. Practitioner argues rejection improper because the size of the Patent Y reference is different than the dimensions given in X, which will cause the lamp to block the fan. However, X application doesn’t disclose this feature. What should examiner do?

one choice: Allow claim because the dimensions different is enough to overcome the rejection.
another choice: Sustain rejection because Patent X doesn’t mention that this feature is critical to the claim (what I picked, not sure if it was right)
yet one more choice: Allow claim because Y doesn’t have the same feature that X has.

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34 MarioNo Gravatar July 19, 2012 at 10:04 am

Had this question 7/19/2012. It was pretty easy. The answer was something like ignore what the practitioner is arguing because drawings that are not to scale cannot overcome a rejection.

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35 NewbieNo Gravatar July 19, 2012 at 1:19 pm

Which MPEP version is used in the Patent Bar exam?

Thank you,

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36 KWNo Gravatar July 22, 2012 at 9:26 pm

Had variant. of this today. 7/22/12

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37 Mike01ciNo Gravatar August 8, 2012 at 1:40 pm

Got it 8/7/12

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38 Wishful ThinkingNo Gravatar October 3, 2012 at 4:03 am

Had this 9/24/12.

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39 GeppiegirlNo Gravatar October 4, 2012 at 11:16 pm

Had this 9/25

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40 RandomNo Gravatar October 15, 2012 at 8:34 pm

Got this one today.

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41 ZNo Gravatar March 31, 2013 at 3:08 pm

Got this 3/30/13.

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42 MehNo Gravatar August 5, 2013 at 4:48 pm

Got this one today, 8/5/2013, MPEP 8R9

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