[Patentpractice] Lined through references on IDS

[Krista Jacobsen]

Thank you, Carl and Rick.

I will definitely be taking action to protect my client. Ideally, the
examiner will create a new 1449 that indicates he considered all of the
references. But if that is not something I can get, I will file an examiner
interview summary documenting that he stated via phone that he did consider
all of the references and only lined through them because there was no
period at the end of those entries.

Thanks for your suggestions!

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


On Thu, Jan 16, 2025 at 9:28 AM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>> --
>> 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.
>
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250116/a9f9da07/attachment.html>