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

Tue Sep 9 00:25:14 UTC 2025

	I would send the examiner a vector graphics PDF and not worry about
going through the counting of steps, which count is actually
irrelevant.  

	The examiner’s 101 rejection is likely based on the notion of
“Mental Process,” which your claim is not directed to. The MPEP
“safe harbor” on that says: “concepts that cannot _PRACTICALLY_
be performed in the human mind and thus are not 'mental process'”
MPEP § 2106.04(a)(2) (emphasis added). However, neither the PTO
regulations nor the MPEP establish a _STANDARD_ by which to determine
the “_PRACTICALITY_” of performance “in the human mind” or
“with pen and paper.” If an examiner can argue that a process that
takes 2 millisecond on a computer is “practical” when it takes 20
seconds “with pen and paper,” How would one determine that
performance “with pen and paper” taking 200 seconds is deemed
“impractical” as too long? and on what basis? 

	In your reply, ask the examiner to supply the written _PRACTICALITY
STANDARD _by which he will make his determination that “doing it
with pen and paper” would be practical. The examiner can assert
until the cows come home that implementing your claim “with pen and
paper” would be practical. However, no matter how many steps he
counts for that determination, a rejection of your claim without an
_ESTABLISHED STANDARD_ for determining “practicality” would be
"arbitrary, capricious, an abuse of discretion, or otherwise not in
accordance with law," 5 U.S.C. § 706(2)(A), and/or an agency action
undertaken "without observance of procedure required by law." 5 U.S.C.
§ 706(2)(D). 35 U.S.C. § 2(b)(2)(A) authorizes the PTO to
“establish regulations, not inconsistent with law, which shall
govern the conduct of proceedings in the Office.” Under this
authority, the PTO must promulgate and give notice of its standard for
making the factual determination your examiner now makes. Courts have
held that agency determinations without established standards for
making such determinations are arbitrary and capricious. _See U.S.
Postal Serv. v. Postal Regulatory Comm'n_, 785 F.3d 740, 750 (D.C.
Cir. 2015) (Finding that “the Commission's decision is arbitrary and
capricious because it fails _TO ESTABLISH A CLEAR AND RATIONAL
STANDARD_ for which changes to mail preparation requirements it would
consider ‘changes in rates,’ resulting in inconsistent application
of the standard within the Commission's decision. … We therefore
remand the case to the Commission to enunciate an _INTELLIGIBLE
STANDARD_ and then reconsider its decision in light of that
standard”) (emphasis added); _Oceana, Inc. v. Locke_, 670 F.3d 1238,
1241-1243 (D.C. Cir. 2011) (Noting that “regulation did not
prescribe standard” by which agency would make its determination,
remanding to the court “for the purpose of vacating the Amendment
and remanding it to the agency for further proceedings consistent
herewith.”); _Animal Legal Defense Fund v. Glickman_, 943 F. Supp.
44, 59 (D.D.C. 1996) (Entering “judgment in favor of the plaintiffs
on Count II; the agency's _FAILURE TO PROMULGATE STANDARDS_ for a
physical environment adequate to promote the psychological well-being
of primates constitutes agency action unlawfully withheld and
unreasonably delayed in violation of the APA”) (emphasis added).
Here, the burden is not yours --it is on the examiner.
Ron_-------------------------------------------------------__Ron D.
Katznelson, Ph.D.__2020 CHAIRMAN, __IEEE-USA IP COMMITTEE
[1]__OFFICE:__ 760 753-0668__EMAIL: rkatznelson at roadrunner.com [2] 
__SSRN: http://ssrn.com/author=706742 [3] _ _ _

	-----------------------------------------FROM: Patentpractice  on
behalf of Pierce Mooney via Patentpractice 
SENT: Sunday, September 7, 2025 4:21:32 PM
TO: For patent practitioners. This is not for laypersons to seek legal
advice. 
CC: Pierce Mooney 
SUBJECT: Re: [Patentpractice] Suggestions for Large Exhibit
(dimensions, not pages) Submission in Response to Office Action     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  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
 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

  [4]http://www.weitzmanip.com [5]

 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 [6]

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 -------- Original message -------- From: Richard Straussman via
Patentpractice  Date: 8/29/25 11:36 AM (GMT-07:00) To:
patentpractice at oppedahl-lists.com Cc: Richard Straussman  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

  [7]http://www.weitzmanip.com [8]

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