ANSWER: (C) is the most correct answer. See MPEP § 706.07(b). (A) is incorrect because a final rejection is not proper on a second action if it includes a rejection on newly cited art other than information submitted in an information disclosure statement under 37 CFR 1.97(c). MPEP § 706.07(a). (B) is incorrect because it is improper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the parent application. MPEP § 706.07(b). (D) is incorrect because it is improper to make final a first Office action in a substitute application where that application contains material, which was presented in the earlier application after final rejection, or closing of prosecution but was denied entry because the issue of new matter was raised. MPEP § 706.07(b). (E) is incorrect because (C) is correct.
Q) Reply to a Second Action Final Rejection (10.03.15a)
Recent test takers report question #15 from the October 2003 (am) exam is in the Patent Bar database of tested questions.
15. A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?
(A) An amendment canceling all rejected claims and complying with 37 CFR 1.116.
(B) Only a Notice of Appeal.
(C) The appropriate fee for a request for continued examination (RCE).
(D) A continued prosecution application (CPA) under 37 CFR 1.53(d).
(E) All of the above.
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