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<p>Yes this lining-through is a trap for the unwary. Good for you
that you caught this one. I bet lots of filers miss it.</p>
<p>No there is no statute or rule that requires a period at the
end. this is nuts. If I were to go to the trouble of clicking
around, I could find a hundred IDSs that I filed in the past
decade where every NPL item listed was absent any period at the
end, and no "kick bacK" happened.</p>
<p>The problem of course is that if you were to sit back and trust
the Examiner to "fix" this supposed "defect", the patent would
issue with the NPL item missing from the front page of the issued
patent.</p>
<p>You have no choice but to push back on this, again and again,
until the Examiner does the right thing.<br>
</p>
<div class="moz-cite-prefix">On 1/16/2025 10:00 AM, Krista Jacobsen
via Patentpractice wrote:<br>
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<div>Here's a new one for me.</div>
<div><br>
</div>
<div>I submitted an IDS with an application. The IDS listed
several items of non-patent literature (NPL).</div>
<div><br>
</div>
<div>After a restriction requirement and some communication re
an examiner's amendment, we received a notice of allowance.
Accompanying the NOA was the 1449 form in which three of the
NPL items had been lined through. The IDS also has the usual
line about "All references considered except where lined
through." Frowning, I checked my records to ensure that I had
filed copies of these items. (I had.)</div>
<div><br>
</div>
<div>Frowning more, I called the examiner to find out why he had
lined through the references. He said that he considered the
references, but he is supposed to line through any entry of
the NPL section of the IDS that does not end in a period.
(!!!!!) He said the IDS will get "kicked back" to him, and at
that point he will make a correction (to add a period, I
guess?).<br>
</div>
<div><br>
</div>
<div>Has anyone ever heard of this? I would be shocked if,
sometime in the past, I did not end an entry in the NPL
section with a period, and yet this is the first time an
examiner has lined through such entries after having
considered the references.</div>
<div><br>
</div>
<div>Also, who exactly down the line is going to see the
lined-through references and kick the IDS back to him? The
publications people will just assume that he didn't consider
those references.</div>
<div><br>
</div>
<div>I'm considering calling the examiner's supervisor to get
clarity on this supposed rule, but before I do that, I wanted
to check with the brain trust. <br>
</div>
<div><br>
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<div>------------------------------------------<br>
</div>
<div>Krista S. Jacobsen<br>
</div>
<div>Attorney and Counselor at Law</div>
<div>Jacobsen IP Law</div>
<div><a href="mailto:krista@jacobseniplaw.com"
target="_blank" moz-do-not-send="true"
class="moz-txt-link-freetext">krista@jacobseniplaw.com</a></div>
<div>T: 408.455.5539</div>
<div><a href="http://www.jacobseniplaw.com"
target="_blank" moz-do-not-send="true">www.jacobseniplaw.com</a></div>
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