[Patentpractice] Feedback document mis-placing comments
Carl Oppedahl
carl at oppedahl.com
Thu Dec 19 19:06:49 UTC 2024
Thank you Rick for correcting me on this.
I am sorry the USPTO is providing such poor service for your client in
this case.
On 12/19/2024 12:01 PM, Rick Neifeld wrote:
> Carl - That ( sic; filed in "DOCX ... in the first place,") is not
> so. Although my post was long and detailed (in order to convey all
> relevant facts), I stated "In this case, I had filed the original
> application *in pdf format*, for both spec and figs."
>
> And I stated that, in response to the requirement to file a substitute
> specification, I filed - - Clean Copy of the substitute spec, *in DOCX
> format*, also with document description "Specification".- - - . A
> reason for filing the clean copy of the Substitute Specification in
> "DOCX" format was my presumption that the PTO would use the clean copy
> (contrary to the rule specifying the marked up copy "is" the
> substitute specification) for subsequent processing. And my belief
> that PatentServer mangles submitted PDF documents, decreasing their
> fidelity. In this case, a tensor math heavy specification, fidelity is
> very important.. While not mangling DOCX documents. For the DOCX
> documents, I think character fidelity remains high. Our concern with
> DOCX is directed to the PTO's file specification interpreting the data
> in the DOCX file to mean something else, like showing a summation
> sign, where our DOCX shows an integral sign. But not making
> the character edges blurred. So that is why I chose DOCX format for
> the clean copy of the substitute specification. And knowing that I
> could rely upon the orginally submitted PDF version of the
> specification in case dispute arose later in time.
> .
> In any case, I find it problematic that PatentCenter has no Document
> Description to distinguish a follow on portion of a specification, or
> a substitute specificaiton submission, from the original submission of
> the specification. And I find it problematic that PatentCenter has no
> Document Description providing the PTO a means to distinguish a rule
> required "clean copy" from the rule required official substitute
> specification, the marked up copy.
>
> And (David Boundy will appreciate) that the ASU agent's response
> identified a requirement not existent in the rules for the contents of
> a Clean Copy, specifically that the PTO rejects a filed "Clean Copy"
> of a substitute specification because it does not state - - within the
> document constituting the clean copy, that it is a "Clean Copy".
>
> BR, Rick
>
>
>
>
>
> On Thu, Dec 19, 2024 at 1:07 PM Carl Oppedahl <carl at oppedahl.com> wrote:
>
> 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.
>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241219/1d3d96e9/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4751 bytes
Desc: S/MIME Cryptographic Signature
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241219/1d3d96e9/attachment.p7s>
More information about the Patentpractice
mailing list