[Patentpractice] Suggestions for Large Exhibit (dimensions, not pages) Submission in Response to Office Action

[Rick Neifeld]

If you submit an expert declaration saying what you plan to say in the
interview, regarding the inability of a human to calculate in real time,
then you would be ready for appeal on the 101 issue.
Just saying. ...
And by the way, I assume your claim somehow requires the real time
calculation for enablement, right?


Rick


On Sun, Sep 7, 2025 at 7:23 PM Pierce Mooney via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I think the email .jpg ahead of the interview idea works well.
>
> On Fri, Aug 29, 2025 at 2:19 PM Richard Straussman via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> It isn't - it is a PDF of a .jpg picture.
>>
>> *Richard Straussman*
>>
>>
>> *Senior Counsel Registered Patent Attorney * Member NY, NJ & CT Bars
>> *. . . . . . . . . . . . . .*
>> *Weitzman Law Offices, LLC*
>> *Intellectual Property Law*
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>>
>>
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>>
>>
>> On 8/29/2025 2:15 PM, Jim Larsen wrote:
>>
>> If your PDF is a vector drawing it will be capable of the zoom-in you
>> desire.
>>
>> Best regards,
>>
>> -Jim
>>
>> James C. Larsen
>> Attorney
>> Larsen IP PLLC
>> p: 425.298.6846
>> e: jim at Larsen-IP.com
>> w. www.Larsen-IP.com
>>
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>> -------- Original message --------
>> From: Richard Straussman via Patentpractice
>> <patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
>> Date: 8/29/25 11:36 AM (GMT-07:00)
>> To: patentpractice at oppedahl-lists.com
>> Cc: Richard Straussman <rstraussman at weitzmanip.com>
>> <rstraussman at weitzmanip.com>
>> Subject: Re: [Patentpractice] Suggestions for Large Exhibit (dimensions,
>> not pages) Submission in Response to Office Action
>>
>> All,
>>
>>     I have a dilemma.
>>
>>     In response to an Office Action, I want to submit a data
>> visualization image as an exhibit that shows the vast number of individual
>> steps involved in a particular calculation (that is only part of a claim)
>> and that the examiner says can be "done with pen and paper" or in the human
>> mind which, within the express context of the claim involves a time period
>> of less than a second.  Even an infinite number of people could not do
>> that, given the extent of the calculations and the fact that it must be
>> done multiple times within that time window.  Unfortunately, that
>> visualization is so large and complex that, when printed as a PDF on a
>> single sheet, it s merely a blur.  If I can submit as a .jpg, the Examiner
>> can zoom in to see the details, but it appears that the Patent side does
>> not accept .jpg files.  I have also created a large "tiled" PDF that spans
>> 32 pages and will have to be split into two PDFs to meet PTO size limits.
>> It enables a detailed viewing of the individual steps, but, as tiles, it is
>> difficult to see the overall picture.  My current thought is to submit both
>> with an explanation and hope for the best.  Does anyone have any other
>> suggestions or has anyone been able to submit a .jpg as an
>> exhibit/attachment to an Office Action response?
>>
>>     My other thought is to submit both per the above, request an
>> interview, and e-mail the .jpg to the Examiner in advance of the
>> interview.  If I would go that route, does anyone know if the PTO e-mail
>> system will block such an e-mail or strip the .jpg attachment?
>>
>>     Thanks in advance for your input and enjoy the long weekend!
>>
>> *Richard Straussman*
>>
>>
>> *Senior Counsel Registered Patent Attorney *Member NY, NJ & CT Bars
>> *. . . . . . . . . . . . . .*
>> *Weitzman Law Offices, LLC*
>> *Intellectual Property Law*
>> 425 Eagle Rock Avenue, Suite 401
>> Roseland, NJ 07068
>> *direct line* 973.403.9943
>> *main* 973.403.9940
>> *fax* 973.403.9944
>> *e-mail* rstraussman at weitzmanip.com
>>
>>
>> *http://www.weitzmanip.com <http://www.weitzmanip.com/> *
>>
>>
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