[Patentpractice] Lined through references on IDS

[Carl Oppedahl]

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.

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.

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.

You have no choice but to push back on this, again and again, until the 
Examiner does the right thing.

On 1/16/2025 10:00 AM, Krista Jacobsen via Patentpractice 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 <http://www.jacobseniplaw.com>
>
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