Recent test takers report question #4 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
4. The Office mailed an Office action containing a proper final rejection dated July 8, 2002. The Office action did not set a period for reply. On January 7, 2003, in reply to the final rejection, a registered practitioner filed a request for continued examination under 37 CFR 1.114, a request for a suspension of action under 37 CFR 1.103(c) to suspend action for three months, and proper payment all required fees. No submission in reply to the outstanding Office action accompanied the request for continued examination. No other paper was submitted and no communication with the Office was held until after Midnight, January 8, 2003. Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?
(A) If an appropriate reply is submitted within the three month period of suspension permitted under 37 CFR 1.103(c), the application will not be held abandoned.
(B) The application will not be held abandoned if an appropriate reply is submitted within the three month period of suspension and it is accompanied by a showing that the reply could not have been submitted within the period set in the final rejection. For example, the reply includes a showing based on an experiment that required 8 months to conduct.
(C) No reply will prevent the application from being held abandoned.
(D) If, on January 10, 2003, the primary examiner and applicant agree to an examiner’s amendment that places the application in condition for allowance and a notice of allowance is mailed within the three month period of suspension, application X will not be held abandoned.
(E) No other submission by applicant is necessary because application X is still pending. The examiner is required to act on the request for continued examination after expiration of the three month period of suspension.
ANSWER: (C) is the most correct answer. As stated in MPEP § 709, under the heading “Request By The Applicant,” subheading “Request for Suspension Under 37 CFR 1.103(b) or (c),” “The Office will not grant the requested suspension of action unless the following requirements are met: (A) the request must be filed with the filing of a CPA or an RCE…(1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission.” The RCE was improper because no submission in reply to the outstanding Office action accompanied the RCE. Since the RCE was improper, the Office will not recognize the request for suspension. The time period set in the final rejection continues to run from the mail date of the Office action. Since the Office action did not set a period for reply, applicant has a maximum period of six months for reply. A reply was due on February 8, 2003. Since the RCE was improper and the Office did not recognize the request for suspension, the application became abandoned at Midnight of February 8, 2003. (A), (B) and (E) are not correct. As stated in MPEP § 706.07(h), under the heading “Submission Requirement,” “If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c).” An RCE that is not accompanied by a submission is an improper RCE. As stated in MPEP § 706.07(h), under the heading “Initial Processing,” subheading “Treatment of Improper RCE,” “An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.” The period for filing a proper reply was six months inasmuch as no shortened statutory period for reply was set. A proper reply to the final rejection was not filed. Therefore, the application went abandoned for failure to file a proper reply to the final rejection. (D) is not correct. As set forth in MPEP § 706.07(f) under the heading “Examiner’s Amendments,” paragraph (H), “[a]n examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.”
According to the answer a reply was due on Feb 8, 2003. Shouldn’t this be January 8, 2003 or am I missing something obvious?
Thanks
Oh! duh, midnight of Feb 8th is 1 minute after 11:59pm Feb 7th, the last possible minute to submit. too much studying
oops I think I understand it means in a different way
Midnight, January 8, 2003. is 23:59 of Jan 8
after Midnight, January 8, 2003 is 0:01 of Jan 9
the due date is 6 months from July 8, 2002, so it is Jan 8, 2003
The last minute to file is 23:59 of Jan 8, i.e., Midnight, January 8, 2003.
The app became abandoned 0:01 of Jan 9, i.e., after Midnight, January 8, 2003.
709 states in part, “Suspension of action (37 CFR 1.103) should not be confused with extension of time for reply (37 CFR 1.136). It is to be noted that a suspension of action applies to an impending Office action by the examiner whereas an extension of time for reply applies to action by the applicant. In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant. It is only the action by the examiner which can be suspended under 37 CFR 1.103.”
If there needs to be a substantive reply by the applicant in order to avoid abandonment after final rejection, then it seems from this passage that the reqeust for suspension of action is, in itself, improper because it is the applicant who owes a reply here, not the examiner.
The rest about the RCE being improper still seems correct and in line with 1.114 on RCE submissions needing to be accompanied by a response to any outstanding office action.
Thoughts?
Halfbegian, I totally agree with your logic. According to section 709 of chapter 7 it says “The Office will not suspend action if a reply by applicant to an Office action is outstanding.” So I agree that the request for suspension is inappropriate in this scenario. That being said, the RCE is still improper since it was lacking a submission.
Hmmm I still don’t understand how the 6 month time period from July goes to February and not January. Can someone help me out here? (July to Aug=1, Aug to Sept =2, Sept to Oct =3, Oct to Nov =4, Nov to Dec =5, Dec to Jan =6. How do you get to February even with the midnight deadline??
So does the application become abandoned a month after the 6 month statutory timeline for a response? Hence February instead of January??? That doesn’t make any sense to me. My brain is full!!
Kforsythe, good catch. The reply was clearly due on January 8, 2003, the RCE was improper due to lack of submission, and the app became abondoned as of midnight January 8, 2003. In my opinion, the answer seems to have mixed up February with January.
More importantly, noting some of the earlier posts, I wanted to add, for the Submission provided with the RCE to be proper, it MUST be, or have included, the reply to the outstanding office action (Final Rejection). In other words, in this situation:
1.) RCE without the submission = improper RCE = abandoned app
2.) RCE with Submission( without Proper reply to OA) = improper RCE = abandoned app
3.) RCE with Submission (including proper reply to OA) = proper RCE = suspension granted under 1.103(c).
Even though 709 states “In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant.” In order to submit a proper RCE, you need a proper submission, and in order to have a proper submission, it must be, or include, the reply outstanding. (Or at the minimum, a bona fide attempt).
706.07(h) Request for Continued Examination (RCE) Practice, the TABLE under the heading II.SUBMISSION REQUIREMENT, provides that after Final Rejection, the Submission Must include a reply under 37 CFR 1.111 to the final rejection.
Also, under V. AFTER FINAL REJECTION, “If an applicant timely files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission that meets the reply requirements of 37 CFR 1.111, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered.”
Also remember that even if the submission is not fully responsive to the last final office action, it may still be considered a bona fide attempt, and as such, toll the period of reply.
Just don’t forge the RCE fee is also required in addition to a submission.
The practitioner filed everything on the 2nd to last day of the 6-month period, so there was no time left for correcting the failure to submit a submission, which would make the app abandonded on January 8, 2003.
Under MPEP 710.01, the examiner may set a Shortened Statutory Period (SSP) of 1 month to correct the omission if the reply to an OA is substantially complete, but has an inadvertent omission. Although the question does not mention a SSP, if the examiner did set a SSP of 1 month, this would extend the date to February 8, 2003 as stated in the answer.
Funny-second time through and this question seems so easy! I hope my second attempt goes better too.