[Patentpractice] Feedback document mis-placing comments

Tue Dec 17 19:25:50 UTC 2024

Agree. And I will break from ongoing work to add a couple comments and
questions.

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.
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.

Second, I recently had to respond to a Notice of informalities requiring me
to formally revise the Figs and spec.
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.

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?

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:

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.)
Marked Up copy of the substitute spec, in pdf format, with document
description "Specification".  (I found no document description for
"substitute specification.")
Clean Copy of the substitute spec, in DOCX format, with also with document
description "Specification".
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.)

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.)
I also included this note in the Transmittal Letter
"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.
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."

In my response, at the end, I included this DOCX centric statement:

" 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."
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."

   So, comments?
Thanks, RICK

On Tue, Dec 17, 2024 at 1:13 PM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> On 12/17/2024 10:48 AM, William Slate via Patentpractice wrote:
>
> A comment read:
>
> “This claim appears to not end with a period.”
>
> The area highlighted by the comment was a hard return between claims 7 and
> 8.
>
> I found a period missing at the end of claim 9.
>
> Will
>
> Let's sort of summarize where we are on this.
>
> 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.
>
> 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.
>
> 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".
>
> 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.
>
> But see
> https://blog.oppedahl.com/maybe-uspto-will-clarify-the-docx-safeguard/ .
> 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.
>
>
> --
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> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
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