<div dir="ltr"><div dir="ltr">Agree. And I will break from ongoing work to add a couple comments and questions.<div><br></div><div>First, I am concerned when I get a specification for filing that includes embedded image objects. Those objects normally include non ascii characters, and unconventional symbols. For example, for communications modulation schemes or quantum computing algorithms. I cannot easily reproduce those things within a page, in case of a requirement to correct a portion of the specification. </div><div>I get that sort of stuff from foreign colleagues. So I have notified my foreign colleagues. Hopefully they will teach their clients to do a better job at providing patent easy-to-use disclosures. But I doubt it.</div><div><br></div><div>Second, I recently had to respond to a Notice of informalities requiring me to formally revise the Figs and spec. </div><div>I found the process of responding to be more complex and time consuming than in the past, prior to Patent Center and the DOCX coercion. And as to the process, I solicit input on what I did right, and what I did wrong, and what I did that was inconsequential (but perhaps made me feel better), in response to the Notice. </div><div><br></div><div>An issue I am concerned with is compliance with rule 121, substitute specification, in this situation, given Patent Center's filing constraints. By rule, the markup is the de jure substitute spec. The clean copy is for the convenience of the examiner. That is what the rule states, right?. So how do you describe, and which form of file, is a best practice, for complying with the rules for the substitute specification and marked up copy, within the constraints of Patent Center submissions?</div><div><br></div><div>In this case, I had filed the original application in pdf format, for both spec and figs. However, I had in my possession the original DOCX from which the pdfs were created. So I had options. What I ended up filing in response to the Notice were:</div><div><br></div><div>Replacement drawing sheets (figures) in DOCX format, with document description "Drawings, other than black and white line drawings" (At my end pdfs generated by conversion from a DOCX are not fuzzy, like what you see on the PTO side, after filing a pdf via Patent Center.)<br></div><div>Marked Up copy of the substitute spec, in pdf format, with document description "Specification". (I found no document description for "substitute specification.")</div><div>Clean Copy of the substitute spec, in DOCX format, with also with document description "Specification".</div><div>But then also a Clean Copy of the substitute spec, in PDF format, as the AUX.PDF. (Because you get this option when you upload a DOCX and select document description "specification", even after the application and its specification has been filed on some prior day.)</div><div><br></div><div>I also determined the SHA-512 for theAUX.PDF and included that value in my transmittal letter (Yes, I still file transmittal letters listing what I am filing.)</div><div>I also included this note in the Transmittal Letter</div><div>"The applicant notes that the USPTO server may revise and replace DOCX files the applicant uploads, with revised files, prior to entering them into the official file for this application.</div> The applicant notes that the USPTO has not specified exactly how the USPTO server does this, and does not always clearly specify what those changes are."<div><br><div>In my response, at the end, I included this DOCX centric statement:</div><div><br></div><div>" While the USPTO relies upon DOCX submission for the specification, there are in fact over 40 different versions of the "DOCX" specifications, and these file format specifications are generated and controlled by the Microsoft Corporation. See the publicly available specifications at "[MS-DOCX]: Word Extensions to the Office Open XML (.docx) File Format." <br> Therefore, what the USPTO displays, or what the USPTO examiner interprets a specification to contain, based upon a document submitted having a DOCX file extension, may differ from what the applicant submits. Accordingly the examiner is encouraged to review the originally submitted specification, which was submitted in pdf format, and therefore is definite and reliable as to what the applicant's application, as originally filed, discloses, when the examiner examines this application."<br></div><div> <br></div><div> So, comments?</div><div>Thanks, RICK </div></div></div><br><div class="gmail_quote gmail_quote_container"><div dir="ltr" class="gmail_attr">On Tue, Dec 17, 2024 at 1:13\u202fPM Carl Oppedahl via Patentpractice <<a href="mailto:patentpractice@oppedahl-lists.com">patentpractice@oppedahl-lists.com</a>> wrote:<br></div><blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex"><u></u>
<div>
<div>On 12/17/2024 10:48 AM, William Slate
via Patentpractice wrote:<br>
</div>
<blockquote type="cite">
<div>
<p class="MsoNormal">A comment read: <br>
</p>
<p class="MsoNormal">\u201c<span><span>This claim
appears to not end with a period.\u201d</span></span></p>
<p class="MsoNormal"><span><span>The area
highlighted by the comment was a hard return between
claims 7 and 8. <br>
</span></span></p>
<p class="MsoNormal"><span><span>I found a period
missing at the end of claim 9.</span></span></p>
<p class="MsoNormal"><span>Will</span></p>
</div>
</blockquote>
<p>Let's sort of summarize where we are on this.</p>
<p>Anybody who chooses to (incur the risks of using) use DOCX as
their filing method is putting himself or herself at the mercy of
the USPTO's proprietary DOCX rendering engine. Which as of some
months ago was up to version 18, something like that. <br>
</p>
<p>What we see here is an example of that engine being flaky at
application-filing time. And yes I have seen many other instances
of the DOCX rendering engine being flaky at application-filing
time, in other ways.</p>
<p>What stares me in the face is that this same engine is presumably
the black box that will typeset the patent application for
issuance, at some later time down the line. By then it might be
version 24 or version 36. And it might render a square root sign
as a smiley face or might render a Greek letter mu as a "u".</p>
<p>Meanwhile I imagine there are many practitioners who have been
ducking the DOCX risks, assuming that the "ongoing safeguard" of
the auxiliary PDF will somehow permit the practitioner to avert
what would otherwise be a malpractice claim. <br>
</p>
<p>But see
<a href="https://blog.oppedahl.com/maybe-uspto-will-clarify-the-docx-safeguard/" target="_blank">https://blog.oppedahl.com/maybe-uspto-will-clarify-the-docx-safeguard/</a>
. The USPTO has not answered that letter yet, despite almost a
year having passed. I suggest that it would be a mistake, given
the USPTO's deafening silence in response to questions about the
"ongoing safeguard", to assume that the auxiliary PDF will protect
against malpractice claims.<br>
</p>
<p><br>
</p>
</div>
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</blockquote></div></div>