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

[Judith S]

The Examiner has to confirm that they considered it.

Given the statement that it was a "cursory review" already in the file
wrapper, I don't see that this response does anything negative in
litigation.

As to lining through, the Examiner doesn't get to do that because they
don't feel like reviewing the references.

Judith

On Tue, Jan 28, 2025 at 4:57 PM Weitzmanip via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I don’t see how that statement helps in a litigation - you just show that
> the Examiner didn’t do their job, which may affect the presumption of
> validity.  All those statements may do is cause Examiners in later similar
> situations to simply line out the references.
>
>      Am I missing something?
>
>      Rich Straussman
>
> On Jan 28, 2025, at 7:50 PM, Timothy Snowden via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> 
>
> 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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