Recent takers report that question #28 from the October 2003 (PM) test is in the current question database.
28. A patent application is filed disclosing and claiming a system for detecting expired parking meters. The specification fully supports the original, sole claim. The application discloses that the “electronics control unit” contains a comparator and an alarm. The application includes several drawings. One of the drawings shows a block diagram of the system, illustrating the electronics control unit as a box, labeled “electronics control unit.” The sole claim of the application is as follows:
The claim. A system for detecting expired parking meters, comprising: a timer mechanism; an infrared sensor for detecting the presence of a parked vehicle; and an electronics control unit, including a comparator and an alarm, coupled to the infrared sensor and the timer mechanism. A final Office action, dated February 3, 2004, indicates that the sole claim contains allowable subject matter, but includes an objection to the specification, on the grounds that the subject matter of the electronics control unit, though described in a sufficiently specific and detailed manner in the original specification, was required to be shown in the drawings under 37 CFR 1.83. The Office action did not set a period for reply. Determine which of the following actions, if any, comports with the patent laws, rules and procedures as related in the MPEP for overcoming the objection.
(A) On April 1, 2004, a Notice of Appeal is filed together with appropriate fees, and a brief pointing out that a patent should issue since the subject matter of the electronics control unit was adequately described in the original specification.
(B) On April 1, 2004, a drawing is filed in the USPTO illustrating only the comparator and alarm of the electronics control unit that was described in the original specification.
(C) On April 1, 2004, a Notice of Appeal of appeal is filed together with appropriate fees, and a brief pointing out that the addition of a drawing showing the electronics control unit would not constitute addition of new matter since the electronics control unit was adequately described in the original specification.
(D) On September 1, 2004, a petition is filed urging that no further drawing should be required because the subject matter of the electronics control unit, for purposes of the application, was adequately disclosed in the block diagram drawing.
(E) None of the above.
ANSWER: (B). 37 CFR § 1.83(a); MPEP §§ 608.01(l) and 706.03(o). MPEP § 608.01(l) states “[w]here subject matter not shown in a drawing…is claimed in the specification as filed, and such original claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter…It is the drawing…that [is] defective, not the claim. It is, of course, to be understood that this disclosure in the claim must be sufficiently specific and detailed to support the necessary amendment of the drawing…” MPEP § 608.02(d) and 706.03(o). MPEP § 706.03(o), state “[i]f subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).” (A), (C), and (D) are incorrect. See the foregoing quotation from MPEP § 706.03(o). (A) and (C) also are incorrect because objections to drawings are petitionable, not appealable. MPEP §§ 608.02, under the heading “Receipt of Drawing After Filing Date,” and 1002. (D) is incorrect because the petition, filed more than six months after the final rejection, is not timely. A timely petition would be filed within two months from the mailing date of the action or notice from which relief is requested. See 35 U.S.C. § 133; 37 CFR §§ 1.181(f), 1.134 and 1.135(a); and MPEP § 710.01. (E) is incorrect because (B) is correct.
Full question & answer:
28. A patent application is filed disclosing and claiming a system for detecting expired parking meters. The specification fully supports the original, sole claim. The application discloses that the “electronics control unit” contains a comparator and an alarm. The application includes several drawings. One of the drawings shows a block diagram of the system, illustrating the electronics control unit as a box, labeled “electronics control unit.” The sole claim of the application is as follows:
The claim. A system for detecting expired parking meters, comprising: a timer mechanism; an infrared sensor for detecting the presence of a parked vehicle; and an electronics control unit, including a comparator and an alarm, coupled to the infrared sensor and the timer mechanism.
A final Office action, dated February 3, 2004, indicates that the sole claim contains allowable subject matter, but includes an objection to the specification, on the grounds that the subject matter of the electronics control unit, though described in a sufficiently specific and detailed manner in the original specification, was required to be shown in the drawings under 37 CFR 1.83. The Office action did not set a period for reply. Determine which of the following actions, if any, comports with the patent laws, rules and procedures as related in the MPEP for overcoming the objection.
(A) On April 1, 2004, a Notice of Appeal is filed together with appropriate fees, and a brief pointing out that a patent should issue since the subject matter of the electronics control unit was adequately described in the original specification.
(B) On April 1, 2004, a drawing is filed in the USPTO illustrating only the comparator and alarm of the electronics control unit that was described in the original specification.
(C) On April 1, 2004, a Notice of Appeal of appeal is filed together with appropriate fees, and a brief pointing out that the addition of a drawing showing the electronics control unit would not constitute addition of new matter since the electronics control unit was adequately described in the original specification.
(D) On September 1, 2004, a petition is filed urging that no further drawing should be required because the subject matter of the electronics control unit, for purposes of the application, was adequately disclosed in the block diagram drawing.
(E) None of the above.
28. ANSWER: (B). 37 CFR § 1.83(a); MPEP §§ 608.01(l) and 706.03(o). MPEP § 608.01(l) states “[w]here subject matter not shown in a drawing…is claimed in the specification as filed, and such original claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter…It is the drawing…that [is] defective, not the claim. It is, of course, to be understood that this disclosure in the claim must be sufficiently specific and detailed to support the necessary amendment of the drawing…” MPEP § 608.02(d) and 706.03(o). MPEP § 706.03(o), state “[i]f subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).” (A), (C), and (D) are incorrect. See the foregoing quotation from MPEP § 706.03(o). (A) and (C) also are incorrect because objections to drawings are petitionable, not appealable. MPEP §§ 608.02, under the heading “Receipt of Drawing After Filing Date,” and 1002. (D) is incorrect because the petition, filed more than six months after the final rejection, is not timely. A timely petition would be filed within two months from the mailing date of the action or notice from which relief is requested. See 35 U.S.C. § 133; 37 CFR §§ 1.181(f), 1.134 and 1.135(a); and MPEP § 710.01. (E) is incorrect because (B) is correct.
Thank you, Peter. We will fix this question. – myPatentBar
Saw this one yesterday.
Got this on 8/2/11
Why isn’t the drawing new matter?
It’s not new matter because the information that the new drawing depicts was already disclosed in the original specification. 706.03(o)
You bring up a good point. In a different scenario, where the specification did not already disclose the information contained in the drawing, then submitting the new drawing would constitute new matter, and the examiner would reject it.
Got this 2/4/12
Also got this on 2/2
Got this one 3/17/12
Got it 5-10-12
shouldn’t the answer be E, and not B?
When I took did my analysis under test conditions, I was debating between (B) and (E), but I chose E b/c of the following excerpt in the MPEP:
“1.83 Content of drawing. . . .(c)Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).”
doesn’t the phrase “not less than two months” mean that the applicant cannot reply before the passage of two months time (and thus, B is incorrect b/c it was filed before two months time)?
Your understanding is wrong. “Not less than two months” means the examiner must give AT LEAST two months for the applicant to respond. Once the responding period is set by the examiner (no matter 2, 3, 4, 5 or 6 months), the applicant must respond within that period.
thanks. makes sense to me now.
for clarity, the language I cited can be found in 37 CFR 1.83. thanks.
Had this verbatim.
and SNQs on USPTO