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.
{ 30 comments… read them below or add one }
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.
From the forum: “I also got the electric fan question(deminsions adds little)”
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.
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.”
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
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.
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.
I got this, and I think choice was verbatim
I saw this Q in the exam yesterday.
Got this one today.
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.
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.
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).
I got this question 5/16/2011.
Got this question today 5/18/11.
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.
Got the same question on jul 12th exam. answer is that scale does not matter.
Saw this question or a variant on 07/25/11.
had variant 7/26
Got this on 8/2/11
Got this 8/18.
Got this 8/24/11
Got this one on 09/06/11.
Got this one on 9/7/11. Answer is the scale doesn’t matter so rejection stands.
Got this! 9.22.11
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!!
Got it 10/22/11
Passed because of this site!
4/6/2012
Got this on 04/19/12
Had this one a few months ago (01.12.2012)