Section 608.02(f) Modifications in Drawings

Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention. Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901).

All modifications described must be illustrated, or the text canceled. (Ex parte Peck, 1901 C.D. 136, 96 OG 2409 (Comm’r Pat. 1901).) This requirement does not apply to a mere reference to minor variations nor to well-known and conventional parts.

Form paragraph 6.22.05 may be used to require correction.

¶ 6.22.05 Drawings Objected to, Modifications in Same Figure

The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, insert the appropriate Figure number(s).
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a).
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

608.02(g) Illustration of Prior Art [R-08.2012]

Figures showing the prior art are usually unnecessary and should be canceled. Ex parte Elliott, 1904 C.D. 103, 109 OG 1337 (Comm’r Pat. 1904). However, where needed to understand applicant’s invention, they may be retained if designated by a legend such as “Prior Art.”

If the prior art figure is not labeled, form paragraph 6.36.01 may be used.

¶ 6.36.01 Illustration of “Prior Art”

Figure [1] should be designated by a legend such as –Prior Art– because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.