Q) Board Decisions (4.03.37a)

by patentbar on November 10, 2007 · 18 comments

in Exam Questions


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).

1 DrapwragsNo Gravatar March 30, 2010 at 4:35 am

I am a newbie here.
Glad to find this forum…as what I am looking for

2 TRNo Gravatar May 19, 2010 at 8:29 pm

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).

3 fengyuwuzuNo Gravatar October 11, 2011 at 4:49 pm

this is quite different; in the old exam problem, 7-10 were objected not rejected; in your new exam, 8-10 were rejected

4 Has DesignsNo Gravatar June 27, 2012 at 10:37 pm

Yes, the TR example must have been quite different, i.e., claims 7-10 must have stood rejected by the Examiner and the Board chose to reverse. The question then moves such that in “1214.06 Examiner Sustained in Whole or in Part,” … “I NO CLAIMS STAND ALLOWED” instead of point (A) providing the answer, point (B) (1) and (2) provide the answer.

Options B and C in the above question, and which correspond to (1) and (2) would be treated as right answers, if the answer choice had not changed (…it probably had and will in the future).

5 SoBeNo Gravatar November 8, 2011 at 1:37 pm

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.

6 KerstinNo Gravatar January 23, 2012 at 12:19 pm

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.

7 TNoNo Gravatar March 14, 2012 at 10:00 pm

Option (c) is wrong because according to 1214.06, if there is not a timely reply to the office acton to rewrite the dependent claims, the claims are canceled, not amended by the examiner.

8 peeJNo Gravatar May 29, 2012 at 9:34 pm

Just wanted to point out the option (C) would not be wrong under the variant provided by TR – the fact that the time for appellant to take further action under CFR 1.197 has expired is irrelevant. Thus, under the variant, (B) and (C) are correct answers.

9 BarnNo Gravatar August 11, 2010 at 1:59 pm

Even though “time for further action has expired”, will the examiner convert the dependent claim/ or allow the applicant to make the conversion?

10 StephenNo Gravatar August 13, 2010 at 9:31 pm

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….

11 BeckerNo Gravatar May 17, 2011 at 3:36 pm

I got this question 5/16/2011.

12 ohsoobviousNo Gravatar May 25, 2011 at 5:32 pm

got this question on 5/18/11

13 BigbadvoododaddyNo Gravatar July 11, 2011 at 3:20 pm

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)

14 RemandedNo Gravatar September 18, 2011 at 8:30 pm

Got this question (or the variant mentioned by TR) today, 18 September 2011.

15 tomásNo Gravatar March 21, 2013 at 9:37 pm

I think answer (C) is not correct because if the Examiner allows the 1-month period for Applicant to convert dependent claims to independent claims and no reply is received, then the Examiner does not amend the objected to claims but cancels the objected to claims.

1214.06 Examiner Sustained in Whole or in Part

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:
(A) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application with claims 2 and 3; or
(B) Set a 1-month time limit in which appellant may rewrite dependent claim 2 in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.

16 ZNo Gravatar March 31, 2013 at 1:46 pm

Got this 3/30/13.

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