[Patentcenter] Another Docx Horror Story

[Andrew Berks]

At the risk of boring this group to tears--

Last fall, before the risks of docx filings were crystal clear, I filed a
response to a restriction requirement with the claims in docx format. A
corresponding pdf was not filed. In the response, I canceled claims 1-6,
withdrew claims 7-15 as non-elected , and filed new claims 16-19
with the same subject matter as original claims 1-6. New claim 16 was
independent, new claims 17-19 were dependent on claim 16.

I just got the office action back, and it is a monster. 46 pages. Among
other stuff, the examiner alleged I was not responsive to the office
action. I was confused reading this and wondering how I could have messed
this up so badly.

On further investigation, I discovered that the claims 17-19 in Patent
Center are shown as depending from claim 11 - not claim 16! I just went
back and double checked - all of my drafts show claims 17-19 depending from
claim 16. I probably used the Word cross-reference feature to organize the
claim numbers, but the USPTO on upload corrupted this info. For some
reason, the feedback document was not saved so I have no conclusive proof
of the data corruption, but on my side all drafts have the dependence from
claim 16.

So in retrospect, it is not surprising the examiner said I was not
responsive since as far as she could tell, claims 17-19 were drafted as
depending from non-elected claims. While it looks like a simple typo, this
data corruption was amplified by making my response look like I didn't know
what I was talking about, and the examiner was so annoyed she blasted out
46 pages.

I want to be clear here - this was not a typo - it was a docx data
corruption error caused by the USPTO. Now I have a big job cleaning up this
mess and it's probably going to cost the client an RCE.

Andrew Berks, Ph.D., J.D. | Partner

Patent Attorney and IP Licensing

FRESH IP PLC

28 Liberty St 6th Fl

New York NY 10005 (US)

Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
e: andrew at freship.com | w: www.freship.com berksiplaw.com

Direct: +1-845-558-7245
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