[Patentpractice] Examiner did not really consider IDSs -- what to do or say?

[Judith S]

I would definitely respond. That's crazy making.

In accordance with MPEP 609, "Once the minimum requirements of *37 CFR 1.97
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e321609>*,
*37 CFR 1.98
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e321738>*,
and *37 CFR 1.33(b)
<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#aia_d0e317540>*
are met, the examiner has an obligation to consider the information."
Therefore, it is our understanding that the IDS submitted on DATE was
considered by the Examiner, as required.  If the information was not
considered, the Examiner is requested to indicate in what way the submitted
IDS failed to comply with the rules.

Judith

On Tue, Jan 28, 2025 at 4:07 PM Patent Lawyer via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> We've discussed this before, but I need some good language here.
>
>
>
> A first office action includes the following statement:
>
>
>
> *"The examiner has performed a cursory review of the references provided
> by the applicant on Information Disclosure Statements (IDSs) but due to
> time constraints cannot perform a detailed review of every reference. As
> such, while the examiner has acknowledged that the references were
> received, this is not to be construed as an admission that the instant
> application is not anticipated by any of the provided references."*
>
>
>
> It should not matter, but our IDSs included about 30 US patent documents,
> 5 foreign patent documents, and about 8 NPL documents, two of which were a
> search report and written opinion for the PCT application.
>
>
>
> I can't make the examiner read anything. But I don't want to leave their
> statement unanswered.   At the very least, I want to say something like
> our IDSs were filed according to the rules.
>
>
>
> *The applicant's Information Disclosure Statements (IDSs) were filed in
> compliance with 37 C.F.R. §§ 1.97 and 1.98, reflecting the applicant's good
> faith effort to fulfill the duty of disclosure under 37 C.F.R. § 1.56. *
>
>
>
> What else can I say?  "Do your effing job?"  Any argument for saying
> nothing?
> --
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