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

[Timothy Snowden]

Helpful - thanks!

On 1/28/2025 6:35 PM, Scott Nielson via Patentpractice wrote:
> Here is the template response I developed the last time this issue 
> came up. Feel free to use it, suggest revisions, etc.
>
> *_Information Disclosure Statement—Cursory Review Not Allowed_*
>
> The Office Action acknowledged the submission of the information 
> disclosure statement dated [date] but stated that the listed items 
> were only given a cursory review due to time constraints. Office 
> Action, pp. __. Applicant is sympathetic to the time constraints 
> involved in examining a patent application. However, the applicable 
> rules do not permit a cursory review of information submitted in an 
> information disclosure statement.
>
> The MPEP explains that an information disclosure statement filed in 
> compliance with 37 CFR 1.97 and 1.98 “will be considered by the 
> examiner assigned to the application.” MPEP 609. The “examiner has an 
> obligation to consider the information,” which means “considering the 
> documents in the same manner as other documents in Office search files 
> are considered by the examiner while conducting a search of the prior 
> art in a proper field of search.” /Id./ Initialing the item or an 
> equivalent acknowledgement means “that the information has been 
> considered by the examiner to the extent noted above.” /Id./ There is 
> no provision for performing a cursory review of the items.
>
> Applicant will assume that the Examiner has reviewed these comments 
> and fully considered all the items listed in the information 
> disclosure statement in accordance with MPEP 069 unless the Examiner 
> states otherwise in a future communication.
>
>
> *Scott Nielson*
>
> 801-660-4400
>
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