Drawings that are good enough and then not good enough

Every month or so, in recent years, we receive from the USPTO a Notice to File Corrected Application Papers (NTFCAP) in a recently filed patent application that says our drawings are not good enough.  What we find to be frustrating and annoying about this is that invariably the application is a continuation or a divisional of an application in which the drawings were good enough. Today I filed a request to have such a Notice withdrawn.  Here is what I wrote: 

First, the present application is a continuation of US patent application number A2 which the USPTO published on March 8, 2018 as publication number PUB2. Attached hereto is a copy of Sheet 2 of that publication. As may be seen, the USPTO did electronically reproduce exactly that figure 2. Thus the view expressed in the Notice that the figure 2 is “not electronically reproducible” is in error. Indeed the way that the undersigned obtained the figure 2 that is in the present application file is by downloading the figure from the official USPTO file for A2. If the figure was good enough for A2, it is good enough for [the present] US patent application.

Second, A2 is a continuation of A1 which the USPTO published on February 16, 2017 as publication number PUB1. Attached hereto is a copy of Sheet 2 of that publication. As may be seen, the USPTO did electronically reproduce exactly that figure 2. Thus the view expressed in the Notice that the figure 2 is “not electronically reproducible” is in error. Indeed the way that the undersigned obtained the figure 2 that is in A2 is by downloading the figure from the official USPTO file for A1. If the figure was good enough for A1, it is good enough for [the present] US patent application.

Third, the figure questioned in the Notice is mere “Prior art” as may be seen in the legend at the top of the sheet. As such, the importance and significance of the figure is not the same as the importance of other figures that are not “Prior art”.

For all of these reasons, it is respectfully requested that the Notice be withdrawn.

It will be interesting to see if the USPTO withdraws the Notice.  

What do you think?  Have you succeeded in getting such a Notice withdrawn?  Please post a comment below.

6 thoughts on “Drawings that are good enough and then not good enough

  1. We had the same situation (the drawings had issued in a patent in the parent), and tried to file a response similar to what is listed in your post. Not only did the PTO not withdraw the Notice, they issued a Notice of Incomplete Response (because no replacement drawings were filed), and since it took quite a while for the Notice of Incomplete Response to issue, we ended up paying extension of time fees which was extremely frustrating. I have also spent quite a bit of time on the phone with the AAU trying have these types of Notices withdrawn, but have never had any luck. They always insist that we must file replacement drawings. I will be interested to hear what happens with your response!

  2. I get this kind of crap in about 1 in 4 continuations (including bypass continuations, where the drawings were okay for a PCT publication).

    I usually just refile exactly the same drawings (often with the figure number in a different font). And when I do that the replacement drawings have always been accepted.

  3. I do what BS does, and it always works. Merely file a response to the notice, filing the exact same drawings again, as replacement sheets. I don’t even change the figure number font.

  4. We are filing a response today to a NFCAP with this issue as well. I was wondering if anyone else has encountered an issue in Patent Center: “The PDF file contains multiple layers and must be flattened prior to submission”. Oddly, if I upload the same document into EFS Web I do not receive this message. Thank you.

    • Yes from the earliest alpha test days of Patentcenter it has been the case that Patentcenter will often puke on a PDF file that EFS-Web thinks is just hunky-dory. In our office whenever either system pukes on a PDF, the sure-fire way to make the problem go away is to use the free software CutePDF and just print the offending file to CutePDF. Now I can guess what you are thinking here. Why can’t the USPTO developers just get a license to the free software CutePDF and whenever the situation calls for it, Patentcenter or EFS-Web could just run the PDF file through CutePDF as part of the internal processing at the USPTO.

      The other thing of course is that the USPTO systems will mangle or ruin any file that contains anything that is not a color depth of 1 bit per pixel (anything other than pure black and white). They halftone the image, which spreads the information content of each pixel into several of the adjacent pixels. If you are the Marvel company printing comic books in the 1950’s, this halftoning approach is a feature, not a bug, because it permits a single-color ink and a simple printing process to yield fairly reader-friendly color gradations. But if you are a patent office in this century, it is a bug, not a feature, because it blurs the image often beyond recognition.

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