[Patentcenter] What is a REF.OTHER reference?

[Richard Schafer]

Carl,

Thanks. That unfortunately tracks what I was thinking. I’m going to try the approach of talking to the examiner to see if he’s willing to produce an 892 listing the document. He’s already been reasonably helpful in the office action suggesting how to get to allowance in this case, so he might be amenable to cooperating on this. At the very least, I hope to find out why something got handled this way.

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>

From: Carl Oppedahl <carl at oppedahl.com>
Sent: Monday, May 13, 2024 10:25 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Subject: Re: [Patentcenter] What is a REF.OTHER reference?


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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