[Patentcenter] Another Docx Horror Story

[Andrew Berks]

Yes that did change the numbering. Thanks - I will have to keep that in
mind!

Andrew H. Berks, Ph.D., J.D.
Patent Attorney
Berks IP Law PLLC
28 Liberty St 6th Fl
New York NY 10005
mobile: +1 845-558-7245 <http://voice.google.com/calls?a=nc,%2B18455587245>
<http://voice.google.com/calls?a=nc,%2B18455587245>
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andrew at berksiplaw.com, berksiplaw.com  freship.com
LinkedIn <https://www.linkedin.com/in/andyberks/>


On Thu, Apr 25, 2024 at 8:27 PM Christian Scholz <cscholz at wavsip.com> wrote:

> Andrew,
>
>
>
> If you take your original draft word document that has claims 17–19
> depending from claim 16 and select all text and hit F9 (field refresh),
> does it change to what the USPTO has?
>
>
>
> Several years ago I sent an Examiner a proposed Examiner’s amendment of
> the last two claims in a claim set; the claim set they were copied from
> used sequential autonumber fields, and those fields went into the new
> document with the last two claims.  However, I did not refresh the field
> values, and they thus had the correct claim numbers listed.  The patent
> then issued and claims 1 and 2 were replaced by the amended versions of
> claims 19 and 20.  After discussing with the Examiner, they realized that
> the USPTO systems automatically do field refreshes on Word documents, which
> can wreak havoc on claim sets that have dynamic numbering in them.  In this
> case, claims 19 and 20 became claims 1 and 2, and the USPTO dutifully
> replaced actual claims 1 and 2 with the amended claims 19 and 20 and left
> actual claims 19 and 20 unamended.
>
>
>
> I now make all my claim numbering static just prior to filing.  Dynamic
> numbering is useful when drafting and in source documents, but there’s too
> much risk of mayhem if left in on filing.
>
>
>
> Christian
>
>
>
> *PS: I once received a transferred-in case in which the original drafter
> used paragraph numbering for their claims.  The draft was then filed by
> another firm that applied their standard formatting to the document prior
> to filing, not realizing that in doing so, they had wiped out all the claim
> numbers (from 80 claims).  All of the dependent claims showed up as being
> dependent on claim 0. *
>
>
>
> *Christian Scholz*
>
> Weaver Austin Villeneuve & Sampson LLP
> 555 12th Street, Suite 1450
> Oakland, CA 94607
> (510) 663-1100
>
>
>
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>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On Behalf
> Of *Andrew Berks via Patentcenter
> *Sent:* Sunday, April 21, 2024 9:20 AM
> *To:* For bug reports, feature requests, and tips and tricks about Patent
> Center. <patentcenter at oppedahl-lists.com>
> *Cc:* Andrew Berks <andrew at berksiplaw.com>
> *Subject:* [Patentcenter] Another Docx Horror Story
>
>
>
> 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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