[Patentpractice] Lined through references on IDS

[Rick Neifeld]

"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." - By rule, all communications must be in writing.
So file a remarks noting the examiner verbally admitted he had considered
the lined through reference, but was required to line through them because
the citations did not enter in a period. Protect your client first. Then
deal with bureaucratic issues.  My two cents.



On Thu, Jan 16, 2025 at 12:03 PM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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>
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>


-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
This is NOT a confidential and privileged communication.  If you are not
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