Comments on: Q) Exam Concepts – Appeals

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 19:21:48 +0000

This only applies if the examiner has not considered the amendment.
But if he has and did not enter it – board cannot remand, it has no jurisdiction over that.

By: Becker

Becker — Tue, 17 May 2011 19:22:34 +0000

I got several of these questions 5/16/2011.

By: T.A.

T.A. — Mon, 23 Mar 2009 18:32:20 +0000

Regarding 5) Board remand, see 1211.03:

“Affidavits or declarations filed with ** the filing of a notice of appeal but before jurisdiction passes to the Board (see MPEP § *>12061.116(e)are necessary andIf such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.filing of a notice of appealunless the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented have been made. See MPEP § 1206.41.50(b)41.50(b)< rejection, see MPEP § 1214.01.”

By: patentbar

patentbar — Thu, 04 Sep 2008 19:53:52 +0000

There was one question on the exam that really stumped me and I didn’t find the answer after about 8-10 minutes of searching. The question went something like:

“In a design application, which of the following actions will not result in the application becoming abandoned?” Or it could have been “In a design application, which of the following actions will prevent the application from becoming abandoned?” There were no dates or anything like that. That was pretty much the extent of the question. The only answers I can remember were something like:

a) File a reexam
b) File a notice of appeal without the appeal fee
c) File a request for continued examination

I’m new here, been lurking awhile, scheduled to take the test in a little over a week. Since I’ve been nose-down in the MPEP for awhile now, I figured I’d take a crack at providing my thoughts on this question.

(a) Reexam is available for design patents, but is inapplicable to applications. So a request for reexam would be improper in a pending application, and without a proper response, the application would eventually go abandoned.

(b) A notice of appeal without the fee will be rejected, though if the statutory period hasn’t expired this can be cured by filing for an extension of time along with the fee.

(c) RCE is not available in design applications (1502.01); only CPA (which in turn is not available to utility/design applications unless filed prior to 7/14/03 in an app filed prior to 5/29/00). So like a reexam request in this case, an RCE would be improper.

Too bad you can’t remember the other two answers. Of these, (b) appears closer to correct than (a) or (c), but on its face (b) alone won’t prevent abandonment without additional action. Essentially they’re all improper responses