Q) RCE (4.02.2p)

by patentbar on August 22, 2008 · 9 comments

in Exam Questions

2. For purposes of determining whether a request for continued examination is in
accordance with proper USPTO rules and procedure, in which of the following situations
will prosecution be considered closed?
(A) The last Office action is a final rejection.
(B) The last Office action is an Office action under Ex Parte Quayle.
(C) A notice of allowance has issued following a reply to a first Office action.
(D) The application is under appeal.
(E) All of the above.

All of the answers relate to the evidence of the close of prosecution and, hence, E
is the answer since it includes all of them.

{ 9 comments… read them below or add one }

1 JakeNo Gravatar September 20, 2009 at 5:39 pm

37 C.F.R. 1.114

Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.


2 JunNo Gravatar July 12, 2011 at 3:39 pm

“The last Office action is an Office action under Ex Parte Quayle.” – What does this mean? Which rule?


3 fengyuwuzuNo Gravatar October 11, 2011 at 1:06 pm

Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453 O.G. 213 (Comm’r Pat. 1935) is a United States patent law decision. When a patent application is in condition for allowance, prosecution on the merits is closed. At this time, further amendments of the patent application are allowed only to correct formal objections, which typically include minor and obvious mistakes. The presence of such formal objections precludes the full closing of prosecution; therefore, in these situations, the United States Patent and Trademark Office (USPTO) issues an Ex parte Quayle Office action requesting the applicant to correct the formal objections.[1]


4 PatfieldNo Gravatar July 13, 2011 at 5:15 pm

I believe ex parte quayle refers to when the examiner basically states:

Your application is considered Allowed, however you have to fix some minor details first.

So in respect to this question prosecution is considered closed.


5 RTNo Gravatar May 11, 2012 at 12:52 pm

Got related 5-10-12


6 RLNo Gravatar September 16, 2013 at 3:42 am

Answer (D) is incorrect per 706.07(h) Request for Continued Examination (RCE) Practice, I. CONDITIONS FOR FILING AN RCE:

An applicant may obtain continued examination of anapplication by filing a request for continued examination(see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:
(A) payment of the issue fee (unless a petition under37 CFR 1.313 is granted);
(B) abandonment of the application; or
(C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).

Although (E) is still the best answer because (A) – (C) are correct, answer (D) violates the prior MPEP quote. One cannot file an RCE after filing a notice of appeal, hence “the application is under appeal.”


7 Am I OverstudyingNo Gravatar December 19, 2013 at 1:13 am

I think you just described the reason why (D) is one of the correct answers.

If you re-read the question, it is asking for which cases “will prosecution be considered closed?” In my interpretation, this is to identify which situations will a RCE (request for CONTINUED examination) be rejected. And as you said, if the application is under appeal one cannot file a RCE. Hence, the prosecution is closed and not continued. Same with (A)~(C) they describe conditions for which the RCE must be submitted beforehand, otherwise suffer closed prosecution.

37 CFR 1.114 Has it all.


8 MLNo Gravatar May 3, 2014 at 11:05 pm

As a point of clarification, section 1.114 defines when an RCE is proper, i.e., when prosecution is closed.

“Note: 37 CFR 1.114 in the Final Rule requires that prosecution in an application be closed (i.e, the application is under appeal, or the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application such as an Office action under Ex parte Quayle , 1935 Comm’r Dec. 11 (1935)) before an applicant can request continued examination of the application. Thus, a RCE would not be acceptable if the last Office action was a non-final rejection.”


9 HaleyNo Gravatar October 26, 2016 at 12:03 pm

ANSWER: (E) is the correct answer. 37 C.F.R. § 1.114 (effective August 16, 2000); “Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule,” 65 FR 50092, 50097 (August 16, 2000). (A) is a final action (§ 1.113).
65 FR 50097, column 1, states in pertinent part, “…an action that otherwise closes prosecution in the application (e.g., an Office
action under Ex Parte Quayle, 1935 Comm’r Dec. 11 (1935)).” Thus (A), (B), (C) and (D) are individually correct, and (E), being
the most inclusive, is the most correct answer.


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