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

[Timothy Snowden]

Another thing that comes to mind is "At each stage of USPTO proceedings, 
Office personnel must reweigh all evidence that is relevant and properly 
of record at that time." 2024 Obviousness Guidance 
https://www.govinfo.gov/content/pkg/FR-2024-02-27/pdf/2024-03967.pdf, 
which has a footnote --
"For a list of additional Federal Circuit cases
directing decision-makers to consider all the
Graham factors when determining obviousness,
including all evidence of obviousness or
nonobviousness that is before the decision-maker,
see In re Cyclobenzaprine Hydrochloride Extended-
Release Capsule Patent Litig., 676 F.3d 1063, 1076–
77 (Fed. Cir. 2012).

I have happily not really run into those IDS statements (at least not 
quite like that) yet -- but now I'm thinking this could make a good 
boilerplate basis, along with Judith's point.


------------------------------------------------------------------------
*TIMOTHY D. SNOWDEN*
Certified Patent Practitioner | Certified Licensing Professional
Definitive Patents <https://definitivepatents.com>
/254-346-1763 <tel:+12543461763> | timothy at definitivepatents.com
linkedin.com/in/timothy-snowden <https://linkedin.com/timothy-snowden>/
*Book a meeting!* <https://calendar.notion.so/meet/timothysnowden/koba280z>

/Confidentiality Notice: The information contained in this email and any 
attachments is intended solely for the use of the individual or entity 
to whom it is addressed and may contain confidential and/or privileged 
material. Any review, retransmission, dissemination, or other use of, or 
taking any action in reliance upon this information by persons or 
entities other than the intended recipient is strictly prohibited. If 
you have received this email in error, please contact the sender and 
delete the material from any computer./

On 1/28/2025 6:16 PM, Judith S via Patentpractice wrote:
> 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?
>
>     -- 
>     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/20250128/05108770/attachment.html>