(Update: the letter has been sent. See blog article.)
(Update: I have prepared a letter for people to sign and you can see it here. The letter will close for signatures on Tuesday, October 12, 2021.)
I received an Office Action the other day that reminded me that I have been meaning to make several requests to Tech Center 2900. This is the part of the USPTO that examines design patent applications. If your practice includes US design patent applications, I hope you will read on and post a comment or two.
The Office Action that prompted this blog article was in a US design patent application. As many readers know, in a design patent application the figures are of extreme importance. If there is something wrong with the figures, this can be a big problem. So it is of course important for the Examiner to look closely at the figures.
Which brings me to my first request for Tech Center 2900. My first request is tied to the fact that the USPTO e-filing system ruins any file that it loads into IFW if the file contains any amount of color or gray scale. Normally the original figures file gets preserved in a separate system that is variously called “Supplemental Content” or SCORE. The way the USPTO systems are set up, it is easy to click around in IFW to view things and to print them out, and it is easy to find the document that you want to view or print out. In contrast, it is a lot of trouble to use SCORE. It requires lots of extra mouse clicks, and you often must click around and download multiple files in a sort of treasure hunt to try to figure out which of the downloaded files is the one that you actually want. It also takes a long time to download files from SCORE because the downloads go very slowly. I think some Examiners get in the habit of trying to use IFW files whenever possible and try to avoid using SCORE unless there is no other choice.
What happened in my recent Office Action is that the Examiner focused on some particular portions of some of my client’s figures, saying that they were a bit fuzzy. The Examiner took screen shots from her computer screen, cropped them, and pasted them into her Office Action, and said that these portions were examples of what was unacceptably fuzzy.
But what the Examiner failed to say is whether the fuzzy stuff she was griping about was from IFW, or whether she had gone to the trouble to look in SCORE. Given that many drawings in IFW are fuzzy exactly because the USPTO system ruins them and makes them fuzzy, it is not at all a surprise if an Examiner might say that something in IFW is fuzzy. I have had many times in the past where I had to ask an Examiner to please go look at the SCORE drawings and then the Examiner said those drawings were just fine.
First request. It seems to me that Examiners in Tech Center 2900 should be required, when griping about the quality of a figure, to say in the Office Action whether the figure they are griping about is a figure that the Examiner obtained from IFW or from SCORE. This will save the applicant from having to waste the time and trouble of a phone call to ask “are you complaining about the IFW figures or are you complaining about the SCORE figures?”
Now turning to a second request. Blowing up a figure by 200% or even 400% and griping about some fine detail that can only be seen in the blown-up rendering of the figure but that would never actually be visible in the printed patent. Examiners should not be allowed to do this.
Saying this another way … just because your computer screen and your software make it so that it is possible for you to blow up an image by 200% or by 400%, does not mean that you are promoting science and the useful arts by actually doing so.
What matters is that members of the public will use the actual issued design patent, and in particular will use the actual printed figures of the actual issued design patent, to figure out the scope of the claim. When they are doing this, it will be absolutely irrelevant what the Examiner could see or could not see during the examination process in some image that had been blown up by 200% or by 400%. What matters is what the image looks like at 100% size, printed with ink using the printer that the USPTO uses to actually print the design patent.
What goes unsaid in all of this is, I think, a sort of unstated hostility to vector drawings as distinguished from old-fashioned hand-drawn India-ink drawings on Bristol board. If you (I mean an Examiner) blow up a PDF of an India-ink drawing, it just gets bigger and grainier. There is nothing to criticize about it. Then you drop the magnification back to a normal 100% and it looks fine on the screen and it looks fine if you print it on paper.
But if you take a vector-drawn PDF and blow up some detail, you can really zoom in. You can eventually see some super-fine detail that sort of looks weird because the software was making an approximation of the surface texture or threads or shading or stippling or something. Now if you return to 100% and print it, it looks fine. But no, at 400% it looks weird on the computer screen and you can certainly tell it was not drawn in that good old-fashioned way with India ink on Bristol board. It was done by some computer person who does not respect the traditional ways. And so we see one of these Office Actions complaining about how it looks when you blow it up to 200% or 400%. Anyway, Examiners need to be told to stop this.
Now turning to a third request. Recall that I was describing an Office Action that an Examiner recently sent to me in a US design patent application. This was a design patent application in which the Examiner rendered a figure on her computer screen, and maybe it was from IFW or maybe it was from SCORE (the Examiner did not say which). And then the Examiner did a screen shot from her screen, and cropped it, and pasted the cropped image into her word processor. And then, I suppose, printed it to PDF. Or maybe printed it on paper, and then some USPTO employee scanned it into a PDF. In any event, there was almost certainly a lot of gray scale in whatever was on the Examiner’s computer screen. So what happened next is … wait for it … the PDF got loaded into IFW. Which means … wait for it … it got halftoned by USPTO’s systems on its way into IFW.
Yes the same USPTO systems that ruin all images e-filed by USPTO customers when they contain any gray scale or color also ruin all images e-filed by USPTO employees when they contain any gray scale or color.
Think about it. I am looking at an image in an Office Action. The way I received it is, it was filtered through IFW. It is an image that the Examiner is using to try to show me just what exactly is wrong with my figures. The Examiner is trying to say look at where this arrow is pointing — it is fuzzy here! The problem is that the image that I am looking at got fuzzed by the USPTO system. It is almost certainly fuzzier than the image that the Examiner was looking at when she pasted it into her Office Action. I will probably never actually get to see the actual image that the Examiner wanted me to see, because IFW degraded it.
So the third request is, for any Office Action containing images, can the Examiner please upload it to SCORE, and please tell the applicant that the original high-quality Office Action document may be downloaded from SCORE?
Now to turn to a fourth request. Can every Examiner in Tech Center 2900 please be instructed that henceforth they must always instruct the Issue Branch to always use the SCORE images when printing the issued patent? See this blog article dated August 19, 2015. I suppose another way to address this concern would be for the USPTO to revise the MPEP to contain an express direction to the Issue Branch to do so.
I suppose what I need to do is make this blog article into a letter to the Director of Tech Center 2900, to be signed by several dozen design practitioners. What do you think? Please post a comment below.