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Using Pictures and Drawings as Prior Art
Posted in Patents

Pictures and drawings can be used as the basis of anticipation and obviousness rejections in U.S. patent prosecution.  Similarly, pictures and drawings can form the basis of patent invalidity claims in U.S. patent litigation.  However, pictures and drawings can only be properly applied to patent claims under limited circumstances.  Although text is more commonly relied upon than pictures and drawings to reject or invalidate patent claims, familiarity with the proper application of pictures and drawings to claims can help patent applicants and patent holders best evaluate their options when pictures and drawings are relevant to claims during prosecution or litigation.

It is well settled law that pictures and drawings can be cited against claims as prior art.  Moreover, pictures and drawings in any qualified piece of prior art can raise patentability issues, whether they originate in a utility patent, a design patent, or other publication such as journal articles, product brochures, etc.  The Manual of Patent Examining Procedure (MPEP) §§ 2121.04 and 2125 are both generally instructive on the proper use of pictures and drawings as prior art during U.S. prosecution.

Even if qualified as prior art, pictures and drawings cannot always form the basis of an anticipation or obviousness rejection, or of an invalidity claim.  A number of limits exist on the applicability of pictures and drawings to claims as related to patentability of the claims.  Careful consideration of these limits can help easily disqualify otherwise qualified prior art pictures and drawings from being used to anticipate, make obvious, or invalidate claims.  The most common of these limits are discussed in further detail below.

First, in accordance with MPEP §§ 2121.04 and 2125, the picture or drawing “must show all the claimed structural features and how they are put together.”  The disclosure of a picture or drawing is not evaluated in a vacuum or according to an undefined standard.  Rather, a picture or drawing’s disclosure is evaluated by what it reasonably discloses to a person skilled in the art.  Thus, if disclosure of a feature or an arrangement of features must be extrapolated in any way from the picture or drawing to formulate a rejection or invalidation of a claim, it is prudent to determine whether the extrapolation is reasonable and would have been suggested to a person having ordinary skill in the art at the time the invention was made.

Second, although explanatory text accompanying a picture or drawing can be instructive in determining the teachings of the picture or drawing, such explanatory text is not necessary for the picture or drawing to be properly used as prior art.  A scenario in which prior art pictures and drawings lack text is most common when a design patent illustration is used to raise an anticipation or obviousness issue for a utility patent claim.  This is because design patents typically include illustrations without captions or other accompanying textual discussion.  Furthermore, whether or not related explanatory text accompanies a picture or drawing, unintended or unexplained features of a picture or drawing can be properly cited against a patent claim.  It can therefore be important to carefully review pictures and drawings outside the context of any text accompanying them because the text may not discuss every feature important to the patentability of a particular claim.  Focusing solely on the text may prevent an otherwise material prior art reference to be overlooked.

Third, sizes and proportions of features shown in a picture or drawing are not evidence of actual sizes or proportions of those features unless the picture or drawing is identified in the prior art publication as being shown to scale.  However, in accordance with that discussed above, explanatory text accompanying a picture or drawing can nevertheless provide a teaching of sizes and proportions of features shown in a picture or drawing not specifically shown to scale based on what the text in combination with the picture or drawing would reasonably suggest to a person skilled in the art.

Comprehensive review of a prior art publication, including a possibly relevant picture or drawing, can thus help inform the propriety of, and perhaps even prevent the application of, a claim rejection or invalidity argument based on a picture or drawing.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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