Test takers report a variation of question #38 from the October 2003 (AM) patent bar exam is in the Prometric database.
38. Prosecution before the primary examiner results in the rejection of claim 1. Claim 2 was objected to as being allowable except for its dependency from claim 1. Independent claim 3 has been allowed. The rejection of claim 1 is properly appealed to the Board of Patent Appeals and Interferences. The Board properly affirms the rejection of claim 1. Appellant has filed no response to the decision of the Board, the appellant has taken no action, and the time for filing an appeal to the court or a civil action has expired. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following actions is the most appropriate response by the examiner?
(A) The examiner should hold the application abandoned.
(B) The examiner should cancel claim 1, convert dependent claim 2 into independent form by examiner’s amendment, and allow the application.
(C) The examiner should set a 1-month time limit in which appellant may rewrite the dependent claim in independent form.
(D) The examiner should cancel claims 1 and 2 and allow the application with claim 3 only.
(E) None of the above.
ANSWER: (D) is the most correct answer. 37 CFR § 1.197(c); MPEP § 1214.06. This case is specifically set forth in MPEP § 1214.06 under the heading “Claims Stand Allowed.” Answers (A), (B) and (C) apply only if no claims stand allowed in the application. They are incorrect because the facts state that claim 3 was allowed. See MPEP § 1214.06, under the heading “No Claims Stand Allowed.” (B) is incorrect. See MPEP § 1214.06 under the heading “Claims Stand Allowed.” Where one or more other claims stand allowed, the examiner is not authorized to convert to independent form a dependent claim that has been objected to (but not allowed or rejected) based on its dependency to a rejected claim. (C) is incorrect. See MPEP § 1214.06 under the heading “Claims Stand Allowed.” Where one or more other claims stand allowed, the examiner is not authorized to provide appellant with time to rewrite a dependent claim into independent form where the dependent claim was objected to (but not allowed or rejected) based on its dependency to a rejected claim.
Is this still correct? 37 1,197(c) does not appear to exist any more. In addition, the 1214.06, under the heading “Claims Stand Allowed”, now recites the same language as under the heading “No Claims Stand Allowed” in regards to the proper action by the examiner.
Ann, this must be outdated. The following quote from the answer above is incorrect now:
MPEP § 1214.06 under the heading “Claims Stand Allowed.” Where one or more other claims stand allowed, the examiner is not authorized to provide appellant with time to rewrite a dependent claim into independent form where the dependent claim was objected to (but not allowed or rejected) based on its dependency to a rejected claim.
It now recites a situation where the Examiner is allowed to set a 1 month time limit.
Not sure that is completely accurate – the latest revision (rev. 8) says that the examiner still rejects both claims 1 and 2 in this situation (see MPEP 1214.06). It is only when the dependent claim (claim 2) is also rejected (not just objected to as being dependent on a rejected claim) that the examiner should give the 1 month time limit if that rejection is reversed by Board.
should be rev. 8, not a smiley face.
I agree. The “objected” claim should go abandoned if the appellant take no action in after the decision light of the current MPEP.
But PLI’s Patware in 2011 have not changed the answer so far(I disagree).
the appellant has taken no action so I assume the correct answer is still D. correct?
Sorry, I omitted claim 3 was “allowed”. I agree the answer is still D.
Got this one 9/22/11
Got this one 3/17/12
I agree that the answer is still D: “If the Board affirms a rejection of claim 1, claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1 and independent claim 3 is allowed, the examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.” 1214.06 under heading II.CLAIMS STAND ALLOWED.