[Patentpractice] Lined through references on IDS

[Krista Jacobsen]

Here's a new one for me.

I submitted an IDS with an application. The IDS listed several items of
non-patent literature (NPL).

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.)

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?).

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.

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.

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.

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com
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