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 Today I filed a request to have such a Notice withdrawn.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For all of these reasons, it is respectfully requested that the Notice be withdrawn.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  Have you succeeded in getting such a Notice withdrawn?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.

4 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.

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