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<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 class="moz-cite-prefix">On 12/19/2024 10:48 AM, Rick Neifeld
wrote:<br>
</div>
<blockquote type="cite"
cite="mid:CA++DgCb+XzwX7AFzDaLZ8MtPONhAFH3GDvg2NFLA0J9oVr9E0w@mail.gmail.com">
<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 gmail_quote_container">
<div dir="ltr" class="gmail_attr">On Tue, Dec 17, 2024 at
2:25\u202fPM Rick Neifeld <<a
href="mailto:richardneifeld@gmail.com"
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>
</div>
</div>
</blockquote>
</div>
</div>
</blockquote>
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