Patent Office Examiners Can Use Just Unlabeled Drawings From a PriorArt Document To Reject Your Application
In this way, as noted above, eve a patent drawing (without labels) can be used in isolation by an examiner to reject a patent application. A recent appeal case at the US Patent and Trademark Patent Trial and Appeal Board illustrates the issue. In case 12/629,354, the applicant (Canrig Drilling Technology Ltd.) attempted to patent direct drive mud pump design using a motor where the stator includes a specific outer cover configuration. While a cover is generally not inventive, Canrig’s claims provided a combination of features and specific positioning of the cover relative to the stator and the examiner was having difficult actually finding all of these elements together. So, the patent examiner had to rely on a drawing in one of the references that did not have any separately labeled cover discussed in the text. Nevertheless, the judges determined that because the applicant has used the cover terminology broadly, that merely excess material in the stator could qualify as a cover.
The judges explained that it is well-settled that a reference does not have to teach a feature using the same terms as an applicant or patentee, and that drawings in a utility or design patent can be cited against claims of a utility patent application. The key was what a person skilled in the art considered to be reasonably disclosed or suggested by the reference, even if the disclosure in the drawing was accidental, unintentional, or unexplained by the document text.
As such, when evaluating a new application for filing, patent applicants should take heed not to dismiss reference drawings merely because the reference is focused on another aspect or includes additional elements. Patent examiners will use only parts of the disclosed material in prior documents to reject new claims and thus the filing strategy needs to take such issues into account, even if the inventors feel that the prior document is generally not relevant.