Question #37 from the April 2003 (AM) exam is in the Prometric database.
37. Applicant properly appealed the primary examiner’s final rejection of the claims to the Board of Patent Appeals and Interferences (Board). Claims 1 to 10 were pending in the application. The examiner did not reject the subject matter of claims 7 to 10, but objected to these claims as being dependent on a rejected base claim. Claim 1 was the sole independent claim and the remaining claims, 2 through 10, were either directly or indirectly dependent thereon. After a thorough review of Appellant’s brief and the examiner’s answer, the Board affirmed the rejection of claims 1 to 6. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is the appropriate action for the examiner to take upon return of the application to his jurisdiction when the time for appellant to take further action under 37 CFR 1.197 has expired?
(A) Abandon the application since the Board affirmed the rejection of independent claim 1.
(B) Convert the dependent claims 7 to 10 into independent form by examiner’s amendment, cancel claims 1 to 6, and allow the application.
(C) Mail an Office action to applicant setting a 1-month time limit in which the applicant may rewrite dependent claims 7 to 10 in independent form. If no timely reply is received, the examiner should amend the objected to claims, 7 to 10, and allow the application.
(D) Mail an Office action to applicant with a new rejection of claims 7 to 10 based on the Board’s decision.
(E) No action should be taken by the examiner since the Board affirmed the rejection of independent claim 1, the application was abandoned on the date the Board decision was mailed.
ANSWER: (A) is the most correct answer. MPEP § 1214.06, under the heading “Examiner Sustained in Whole or in Part.” Under the heading “No Claims Stand Allowed” it states “Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected.” (B) and (C) are not the most correct answers. These options would apply to applications where the Board reversed the rejection of the dependent claims and affirmed the rejection of the independent claim. (D) is not correct. The Board does not render a decision on objected to claims. See 37 CFR § 1.191(c). (E) is not correct because the mailing of a Board decision does not abandoned an application. See 37 CFR § 1.197(a).
{ 11 comments… read them below or add one }
Hi
I am a newbie here.
Glad to find this forum…as what I am looking for
New variant:
Everything is the same except that the Board reversed the rejection of claim 8-10. The correct answer is B (examiner should either convert the dependent claims into independent claims by himself or allow the applicant to make the conversion).
this is quite different; in the old exam problem, 7-10 were objected not rejected; in your new exam, 8-10 were rejected
TR is correct,
With the same facts as the question, if the Board affirms rejection against independent claim 1 (and claims 2-7 are also affirmed as rejected), and reverses all rejections against dependent claims 8-10, then per MPEP 1214.06, the examiner must
1. Convert dependent claims 8-10 into dep form, cancel claims 1-7, by examiners amendment and issue the app with claims 8-10
2. Give appellant 1 month to rewrite claims 8-10 into independent form. No 1.136(a) time extensions available.
Has anyone gotten this variant question? How would you choose between answer B and C on the variant-they both seem to be correct based on SoBe’s statement above. Just wondering if the answer choices are the same as the original question in the variant.
TR,
Even though “time for further action has expired”, will the examiner convert the dependent claim/ or allow the applicant to make the conversion?
Barn, I believe the Examiner can choose either. He can either allow the applicant to modify the approved dependent claims to become independent. If the applicant fails to do so in the time allowed by the examiner then the examiner must do it himself.
The examiner’s alternative is to just make the dependent claims independent himself, then allow the claims. Regardless, even if the applicant doesn’t reply the claims will be allowed in independent form.
This question got me on the practice exam. It’s a lot more confusing than it seems. Because the dependent claims are merely objected to, and not rejected, the appeals board won’t even look at them. Therefore, since the independent claim 1 rejection was sustained, the dependent claims fall too. If instead the dependent claims had been rejected for a substantive reason the board of appeals would have reviewed them and made a decision. I just assumed the board approved the dependent claims since they weren’t mentioned in the board’s decision, bad assumption….
I got this question 5/16/2011.
got this question on 5/18/11
One note regarding choice E (which is incorrect obviously):
If the case is not at the Board but at the CAFC, the mandate issued by the court, terminates the time for the case
If the case is a civil action (district court) then it terminates when the time to appeal that decision expires (2 mos)
Got this question (or the variant mentioned by TR) today, 18 September 2011.