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[04274108]

Hello,

I received my First Office Action and I want to file amendments.  In the "Notice of References Cited", there are 6 documents mentioned.  However, only 2 of these references are mentioned in the "Office Action Summary".

Do I need to only address the references the Examiner mentions in the "Office Action Summary" or must I also consider the references in the "Notice of References Cited"?  

Thanks!

[Jonathan]

No, there is no requirement to address references that were not used in the rejections.

If you have any related applications, however, all of the references need to be cited into those related applications - via an IDS.

[04274108]

Thanks jkudla!  

[Isaac]

You don't have to address art not cited in a rejection, but
its probably a good idea to look the art over before you make
ammendments or argue a rejection.  Sometimes the extra art
is cited because it addresses something in the disclosure that
you might be considering amending the claims with.  Since it
isn't claimed, the examiner can't apply it in a rejection,
but he can cite it just to warn your amendment will probably
get a new rejection (and be made final).

You don't automatically have to cite art found in one application
into all the related applications via IDS.  But you should
consider it on a case by case basis.

[Jonathan]

I agree that all references do not necessarily need to be cited into related applications. However, isn't it safer to cross-IDS all known references into related applications? If it is later discovered that a reference was not cited to a related application, I have seen that it can bring up the issue of not fulfilling the duty of disclosure and the patent being ruled invalid as a result.


Sometimes I see a reference from an art that the Examiner contends is analogous but seems kind of silly to me. Most of the time they are in the same general endeavor but not necessarily could be applied to solve the issue the current invention solves / addresses. For the latter, I would be hardpressed to say the Examiner ((of the related application) does not need to know about those references in the same endeavor.

[Thien Tran]

You don't have to address art not cited in a rejection, but
its probably a good idea to look the art over before you make
ammendments or argue a rejection.  Sometimes the extra art
is cited because it addresses something in the disclosure that
you might be considering amending the claims with.  Since it
isn't claimed, the examiner can't apply it in a rejection,
but he can cite it just to warn your amendment will probably
get a new rejection (and be made final).


This is very true and correct. Examiner can make the case with final rejection.


sincerely,

Thien Tran
MSEE - Registered Patent Agent #47,351
http://www.accesspatentgroup.com