[Patentpractice] Lined through references on IDS

[Carl Oppedahl]

Yeah.  You could index it as an examiner interview summary.

On 1/16/2025 10:19 AM, Rick Neifeld via Patentpractice wrote:
> "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 <http://www.jacobseniplaw.com>
>     -- 
>     Patentpractice mailing list
>     Patentpractice at oppedahl-lists.com
>     http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> -- 
> 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 the intended recipient, please delete this email and notify the 
> sender you have done so.
>
>
>
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