[Patentpractice] Feedback document mis-placing comments
Carl Oppedahl
carl at oppedahl.com
Thu Dec 19 18:07:31 UTC 2024
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?
On 12/19/2024 10:48 AM, Rick Neifeld wrote:
> Follow-up on my post below.
>
> 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.
>
> 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."
>
> 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.
>
> 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:
> Filename: [Troubleshooting_AgentRedacted_XXXXXX.txt]
> 10:12 AM, Called EBC
> Agent ___, agent number 59
> Given case number 2-00092400.
> Agent indicates he cannot address whether a marked up copy is present
> in the official file in Patent Center for this application.
> Agent indicates only "Application assistance unit: 571272400" can
> address my questions.
> Agent transferred me to Application assistance unit: 571272400
> Application Assistance Unit Agent ___, given number 2-00092412
> Agent indicates he cannot see the documents in Patent Center
> identified in the "Documents & transaction history", "Documents" tab.
> 10:31 AM, Agent has put me on hold.
> 11:01 line has hung up (call ended).
>
> 11:03 Calling back. 571272400, Agent ___, answered. Call dropped.
>
> 11:06 Calling back. 571272400,
> 11:07-11:08, approximately 2 minutes of recorded voice message.
> 11:08 Agent ___ answers, provides reference 2-00092412
> 11:09, agent placed me on hold while agent reads notes from 2-00092412.
> Discussion with Agent, identify problem.
> 11:15 Agent Response. I cited rule 1.121 requirements. Agent unclear
> regarding rule requirement. Agent places me "on hold".
> 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."
> 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.)
> 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.
> 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"
> 11:22 Agent places me on hold, again.
> 11:__[??] Agent Clarified: The "marked up copy" does not require any
> additional marking showing it is the "marked up" copy.
> 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."
> *******************
> 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.
> I asked for clarification on the following additional questions
> regarding file format, and AUX pdf.
> Regarding "DOCX" or "PDF" for clean and marked up copy of substitute
> specifications:
> 1. What are the appropriate file formats for a clean copy of a
> substitute specification?
> 2. What are the appropriate file formats for a marked up copy of a
> substitute specification?
> 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.
> 11:35 call continuing at this time.
> 11:__[??] Call concluded. Agent stated she intends to call me back
> within 24 hours.
> ***********************************
>
> Rick
>
>
>
>
>
>
>
>
> On Tue, Dec 17, 2024 at 2:25 PM Rick Neifeld
> <richardneifeld at gmail.com> wrote:
>
> 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
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>
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