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<p>Thank you Rick for correcting me on this.</p>
<p>I am sorry the USPTO is providing such poor service for your
client in this case.<br>
</p>
<div class="moz-cite-prefix">On 12/19/2024 12:01 PM, Rick Neifeld
wrote:<br>
</div>
<blockquote type="cite"
cite="mid:CA++DgCZOfTDA7XfcLeKEdEQcV2Ydy0ZTKcahwrTGJjS6jFfjmQ@mail.gmail.com">
<div dir="ltr">
<div>Carl - That ( sic; filed in "DOCX ... in the first place,")
is not so. Although my post was long and detailed (in order
to convey all relevant facts), I stated "In this case, I had
filed the original application <b>in pdf format</b>, for both
spec and figs."</div>
<div><br>
</div>
<div>And I stated that, in response to the requirement to file a
substitute specification, I filed - - Clean Copy of the
substitute spec, <b>in DOCX format</b>, also with document
description "Specification".- - - . A reason for filing the
clean copy of the Substitute Specification in "DOCX" format
was my presumption that the PTO would use the clean copy
(contrary to the rule specifying the marked up copy "is" the
substitute specification) for subsequent processing. And my
belief that PatentServer mangles submitted PDF documents,
decreasing their fidelity. In this case, a tensor math
heavy specification, fidelity is very important.. While not
mangling DOCX documents. For the DOCX documents, I think
character fidelity remains high. Our concern with DOCX is
directed to the PTO's file specification interpreting the data
in the DOCX file to mean something else, like showing a
summation sign, where our DOCX shows an integral sign. But not
making the character edges blurred. So that is why I chose
DOCX format for the clean copy of the substitute
specification. And knowing that I could rely upon
the orginally submitted PDF version of the specification in
case dispute arose later in time.</div>
<div>.</div>
<div>In any case, I find it problematic that PatentCenter has no
Document Description to distinguish a follow on portion of a
specification, or a substitute specificaiton submission, from
the original submission of the specification. And I find it
problematic that PatentCenter has no Document Description
providing the PTO a means to distinguish a rule required
"clean copy" from the rule required official substitute
specification, the marked up copy. </div>
<div><br>
</div>
<div>And (David Boundy will appreciate) that the ASU agent's
response identified a requirement not existent in the rules
for the contents of a Clean Copy, specifically that the PTO
rejects a filed "Clean Copy" of a substitute specification
because it does not state - - within the document constituting
the clean copy, that it is a "Clean Copy".</div>
<div><br>
</div>
<div>BR, Rick</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<br>
<div class="gmail_quote gmail_quote_container">
<div dir="ltr" class="gmail_attr">On Thu, Dec 19, 2024 at
1:07\u202fPM Carl Oppedahl <<a href="mailto:carl@oppedahl.com"
moz-do-not-send="true" class="moz-txt-link-freetext">carl@oppedahl.com</a>>
wrote:<br>
</div>
<blockquote class="gmail_quote">
<div>
<p>Not to put too fine a point on it, but it looks to me
like if you had avoided any use of DOCX (that is, if you
had filed in PDF in the first place, incurring the $400
penalty) then the USPTO would have been deprived of the
opportunity to provide all of this poor service. Is
that so?<br>
</p>
<div>On 12/19/2024 10:48 AM, Rick Neifeld wrote:<br>
</div>
<blockquote type="cite">
<div dir="ltr">
<div dir="ltr">Follow-up on my post below. </div>
<div dir="ltr"><br>
</div>
<div dir="ltr">Yesterday, I received a Notice of
Incomplete Reply to the Notice To File Corrected
Application Papers. And I filed a response to that
Notice of Incomplete Reply. </div>
<div dir="ltr"><br>
</div>
<div dir="ltr">The Notice of Incomplete Reply asserted
that the Reply to the Notice To File Corrected
Application Papers failed to include "a clean
version without markings." </div>
<div dir="ltr"><br>
</div>
<div dir="ltr">My reply to that Notice was a traverse,
asserting that a clean version without markings had
been filed as part of the Reply to the Notice To
File Corrected Application Papers, and provided
proof from the EAR of the name of the file, and the
SHA-512 hash value associated with the name of the
file. And that the file name included "CleanCopy"
and the transmittal letter and remarks specified
that file was the required clean copy. And including
the exact same DOCX file identified by its unique
Hash value, as a submission, but with the Document
Description "Transmittal Letter." And in the filing
process, I was given an option to include an
AUX.pdf, so I saved the DOCX file as a pdf, and also
submitted that as (yet another) AUX.pdf. And the
EAR for this filing shows, of course, a DOCX
document to which PatentCenter appended "-DOCX" and
the AUX.pdf document, to which PatentCenter did
nothing to the filename.</div>
<div dir="ltr"><br>
</div>
<div dir="ltr">Today, I called the PTO, repeatedly, as
shown in my contemporaneous notes below (filename
"Troubleshooting_AgentRedacted_XXXXXX.txt"), to
obtain clarification, and to ensure the PTO does not
hold the application abandoned, for failure to
respond. I raised some interesting questions that
neither EBC nor the ASU representatives could
answer. And I await a call back after the ASU agent
confers with her supervisor. See my questions at
the end of the record below. My real time notes,
the record of these calls, with the agent names and
my reference number redacted, appears below:</div>
<div>Filename:
[Troubleshooting_AgentRedacted_XXXXXX.txt]<br>
10:12 AM, Called EBC<br>
Agent ___, agent number 59<br>
Given case number 2-00092400.<br>
Agent indicates he cannot address whether a marked
up copy is present in the official file in Patent
Center for this application. <br>
Agent indicates only "Application assistance unit:
571272400" can address my questions.<br>
Agent transferred me to Application assistance unit:
571272400<br>
Application Assistance Unit Agent ___, given number
2-00092412<br>
Agent indicates he cannot see the documents in
Patent Center identified in the "Documents &
transaction history", "Documents" tab.<br>
10:31 AM, Agent has put me on hold.<br>
11:01 line has hung up (call ended).<br>
<br>
11:03 Calling back. 571272400, Agent ___, answered.
Call dropped.<br>
<br>
11:06 Calling back. 571272400,<br>
11:07-11:08, approximately 2 minutes of recorded
voice message.<br>
11:08 Agent ___ answers, provides reference
2-00092412<br>
11:09, agent placed me on hold while agent reads
notes from 2-00092412.<br>
Discussion with Agent, identify problem.<br>
11:15 Agent Response. I cited rule 1.121
requirements. Agent unclear regarding rule
requirement. Agent places me "on hold".<br>
11:16 Discussing "clean copy" requirements. Agent
agrees there is no rule requirement to place
markings on the "clean copy" of a substitute
specification stating it is a "clean copy." <br>
Agent states that, at the "top of" clean copy of
specification, pages must include the phrase "clean
copy" on each page, upper top right corner, of each
page. Upon repeated requests for clarification,
agent specifies that should be in "a header" (as
opposed to inside the margins where text of the
specification resides.) <br>
11:19 Discussing "marke up copy" requirements. Agent
agent is unclear about requirements for a "marked up
copy". Agent does not see the marked up copy in
[whatever she is looking at corresponds to the
Patent Center] the official file.<br>
I identified to agent the name of the file that is
the marked up copy, as including "MarkedCopy" in
filename, as shown in the EAR and in the actual file
named
"2024-12-15_SubSpec_MarkedCopy_CSfiling2811USfiling_ANJA0024-SPEC.pdf"<br>
11:22 Agent places me on hold, again.<br>
11:__[??] Agent Clarified: The "marked up copy" does
not require any additional marking showing it is the
"marked up" copy.<br>
Regarding questions about "Document descriptions"
for clean and marked up copies of a substitute
specification: Agent stated that appropriate
"Document Description" in Patent Center submissions
for both clean copy of a substitute specification,
and for a marked up copy of a substitute
specification, is "Specification."<br>
*******************</div>
<div>After I identified the markings in the submitted
marked up copy, Agent indicated she needed to speak
with a supervisor before providing advice on how to
resolve Patent Center's lack of recognition of the
presence of a marked up copy. <br>
I asked for clarification on the following
additional questions regarding file format, and AUX
pdf. <br>
Regarding "DOCX" or "PDF" for clean and marked up
copy of substitute specifications:<br>
1. What are the appropriate file formats for a clean
copy of a substitute specification?<br>
2. What are the appropriate file formats for a
marked up copy of a substitute specification?<br>
3. Regarding AUX.pdf submissions, whether Patent
Center stores all AUX.pdf submissions? That is,
whether subsequent submission with document
description "Specification" overwrite or otherwise
result in Patent Center discarding prior "AUX.pdf'
submissions. <br>
11:35 call continuing at this time.<br>
11:__[??] Call concluded. Agent stated she intends
to call me back within 24 hours.<br>
</div>
<div>***********************************</div>
<div><br>
</div>
<div>Rick</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<div><br>
</div>
<div> </div>
<div><br>
</div>
<div> </div>
<br>
<div class="gmail_quote">
<div dir="ltr" class="gmail_attr">On Tue, Dec 17,
2024 at 2:25\u202fPM Rick Neifeld <<a
href="mailto:richardneifeld@gmail.com"
target="_blank" moz-do-not-send="true"
class="moz-txt-link-freetext">richardneifeld@gmail.com</a>>
wrote:<br>
</div>
<blockquote class="gmail_quote">
<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">
<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" target="_blank"
moz-do-not-send="true"
class="moz-txt-link-freetext">patentpractice@oppedahl-lists.com</a>>
wrote:<br>
</div>
<blockquote class="gmail_quote">
<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" moz-do-not-send="true"
class="moz-txt-link-freetext">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>
-- <br>
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</blockquote>
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