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It is not recommended to do anything other than list the reference. The time to argue about its relevance is if and when the examiner cites it in an office action. A notation on the IDS that might be seen as saying “don’t look at this” could be seen as steering the examiner away.


Turned out quoting the file wrapper of the reference patent application didn't hurt. I can't say if it actually helped as the enablement argument was just a blip in an 18 page response. This is how it read-- In the Sabatini prosecution, the first Office Action contained the following assertion on page 12, third paragraph — ...the skilled artisan would be ...


The claims of an application might or might not be patentable. That, itself, has no bearing on the document's value as a reference. Poor claim drafting or overly broad claiming would lead to a rejection but not be any indication that the specification did not contain useful information. A journal article can be prior art - it has no claims. Prior art ...

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