[Patentcenter] What is a REF.OTHER reference?

[Carl Oppedahl]

My sympathies.   Yes, it seems to me that you have no choice but to 
somehow get the Examiner's initials and signature on either an 892 or a 
1449 for this odd document.  Otherwise, TYFNIL it would blow up.  The 
adversary would surely find some real or imagined reason why this 
reference somehow puts into question the validity of the patent.

What's particularly said about this is that if you fix it by filing an 
IDS, you will be stuck paying the fee for handing in the IDS after the 
first Office Action.  I suppose you could try to duck it by saying that 
nobody who has ever touched the file was aware of this reference more 
than three months ago, but to do that, you would have to spend hundreds 
of dollars' worth of time quizzing everybody who has ever touched the 
file.  Cheaper just to pay the money.

You could of course phone up the Examiner and try to sweet-talk the 
Examiner into listing it on an 892.  But you may well not feel this is 
something you ought to need to do.  There may be other things about the 
dynamic in the case where you may want to try to get the Examiner to 
cooperate in some other way.

My sympathies.

On 5/13/2024 1:21 PM, Richard Schafer via Patentcenter wrote:
>
> A client received an Office Action this morning. In addition to copies 
> of the 1449s previously submitted by the client in this application 
> and an 892 with references cited by the examiner in the Office Action, 
> the IFW includes a copy of a patent application publication that is 
> not mentioned in the Office Action, not contained in the 892, and not 
> disclosed in any 1449. There are no foreign related applications to 
> this U.S. application, so there’s no ISR or search report from any 
> non-USPTO office. The Doc code is “REF.OTHER,” which is described in 
> the PTO’s Document Description List as “Submission of US Patent, US 
> Application documentation or International or Foreign Search Reports.”
>
>  1. Since the reference isn’t listed in either an 892, a 1449, or even
>     mentioned in the Office Action, was it considered by the examiner?
>     Filing an IDS just to be sure it’s correctly on the record seems
>     absurd, but I’m uncomfortable not doing one.
>  2. Any idea why the examiner would list a reference like that? There
>     is a Search Notes page in the IFW, but there is no search data in
>     any field, so there’s not even an indication of what was searched
>     or how.
>
> Best regards,
> *Richard A. Schafer | Schafer IP Law*
> P.O. Box 230081 | Houston, TX 77223
> M: 832.283.6564 | richard at schafer-ip.com <mailto:richard at schafer-ip.com>
>
>
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