America-Israel Patent Law

Follow-up to post re: We Filed a Legible Amendment...

As a follow-up to my post of a few weeks ago about the examiner who asserted that an amendment we filed was non-compliant because he found it difficult to read as a result of the PTO's post-filing processing of the document, in a different case (but in the same art group), I was contacted by a different examiner who also complained that the amendments we filed were hard to read, and asking for a purely black-and-white copy. Which I was happy to prepare and email to him.

The difference between the more recent case and the one I wrote about earlier is that here, the examiner didn't assert that we didn't comply with the rule. I'm sensitive to these things - the USPTO has a predilection for playing fast-and-loose with the rulemaking process and for ignoring its own rules, and the amendment we submitted complied with those rules, so the examiner was wrong to assert that the PTO's garbling of that document after we filed it meant we weren't in compliance.

Now that I know there's an issue for examiners with color amendments because of the PTO's processing software, I'll just prepare b/w documents for submission in order to have one less thing for examiners to complain about. But I will never let an examiner tell me that a pdf filed with changes marked in color is unacceptable, because it's not unacceptable.

 

 

We Filed a Legible Amendment. The USPTO Garbled It. Now the Examiner Complains...to us, not the USPTO.

So we filed a preliminary amendment in a US national phase application in early 2022, as a pdf made from an MS Word file that had the changes tracked - red strikethrough for deletions, blue underline for insertions. Just as we've done a zillion times in the past.

Today we got a first OA, and the examiner writes the following, which I've never encountered before:

"Please note that the claim listing with the amendment of January 3, 2022 fails to comply with 37 CFR 1.121(a) and with 37 CFR 1.52(a)(1)(iv) in that color was used to mark changes, so that the document is not entirely “in permanent dark ink or its equivalent.”  Nevertheless, the amendment has been entered.  Please note that the use of color in amendments causes problems in legibility in the Desktop Application Viewer (DAV) at USPTO."

In the words of Steve Martin, Well excuuuuuuuuuse me!

Thanks, Mr. Examiner, for deigning to enter the amendments, but why is it OUR problem that the PTO's systems degrade what we file? The document FILED BY US is clear as anything (unless, perhaps, you're red-blue colorblind). That's why we filed it as a pdf - so that it will appear the same on any pdf viewer anywhere.  We complied with the rule (which, I note, doesn’t mention that submissions must be “Desktop Application Viewer” compliant). Your office degraded what we submitted. Take it up with your IT people. 

I note that when I go to "preview" in Patent CenterCrapper and look at the claims filed 26 months ago, I see that the changed portions appear in light grey, whereas the original text is black. I don’t know if this is the same viewer that he uses, but I understand what's bothering the examiner. But again, not our problem.

The late, great Yiddishist Sam Levinson defined "chutzpa" as someone who kills both his parents and then pleads for mercy before the court because he's an orphan. This case isn't quite as bad as that, but it certainly ranks on the chutzpa scale.

Assuming we amend the claims in our response, we will file response as a pdf, with changes marked as normal. And in the response I will include a note to the examiner politely explaining the above...and even offering to email him a pdf copy of the amendment as submitted, unabused by his colleagues at the PTO.

(Related musings: Why is it that it's ok for the PTO to provide us with seriously degraded copies of prior art?  Or to provide foreign-language documents without a translation? This OA cites two French-language publications, without providing a translation.)