Q) Reply to a Second Action Final Rejection (10.03.15a)

by admin on April 8, 2010 · 10 comments

in Exam Questions

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.



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.

{ 10 comments… read them below or add one }

1 PeterNo Gravatar April 10, 2010 at 3:39 pm

This answer set is just plain wrong. (C) is not the right answer. (A) is the CORRECT answer. Here is the correct question and answer set.

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.

15. ANSWER: (A) is the most correct answer. The filing of an amendment complying with 37 CFR § 1.116 is a proper reply under 37 CFR § 1.113 to a final rejection. See MPEP § 714.13, under the heading “Entry Not A Matter of Right,” which states, in pertinent part , “A reply under 37 CFR 1.113 is limited to: (A) an amendment complying with 37 CFR 1.116.” (B) is not the most correct answer because the Notice of Appeal must be accompanied by the appeal fee required by 37 CFR § 1.17(b). (C) is not the most correct answer because the RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111). (D) is not the correct answer because CPA practice does not apply to utility or plant applications if the prior application has a filing date on or after May 29, 2000. See MPEP § 706.07(h), paragraphs I and IV. (E) is not the correct answer since (A) is a proper reply.

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2 BarnNo Gravatar July 21, 2010 at 10:30 am

Peter is right, per my PLI material the correct answer is – (A).

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3 StephenNo Gravatar August 12, 2010 at 9:32 pm

I’m confused about C. According to MPEP 201.06(d) the CPA practice for utility and plant applications ended on July 14, 2003, not November 29, 2000. It specifically says “CPAs filed prior to July 14, 2003 will continue to be processed and examined under the procedure set forth in 37 CFR 1.53(d).” It states the same in 706.07(h). C would still be wrong because it doesn’t include fees, but can someone explain to me why a CPA wouldn’t be allowed as long as the fee is filed?

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4 MattNo Gravatar September 25, 2010 at 11:25 pm

(A) is correct. Given the fact pattern presented, there is nothing to suggest that the final rejection is improper, thus getting the app in condition for allowance is the right choice.

(C) is incorrect since it does not address the outstanding action.

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5 damienNo Gravatar November 6, 2010 at 7:02 pm

I agree – A is the right answer

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6 patenttipsNo Gravatar March 19, 2011 at 7:24 pm

A is correct. RCE requires submission.

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7 LMNo Gravatar March 20, 2011 at 3:45 am

I understand but for answer for this question in 2003 is given as (C) correct answer. I am therefore little confused. :(

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8 LMNo Gravatar March 27, 2011 at 4:18 pm

I am sorry it is (A) do not know how i misread (banging head)

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9 KforsytheNo Gravatar October 18, 2011 at 8:42 pm

I should learn to read the comments before sweating my way through wrong answers on here!! Wish they could be edited!!

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10 PayitforwardNo Gravatar March 8, 2014 at 12:05 am

Had this verbatim.

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