Q) Amendment after Appeal (4.03.38p)

by admin on April 8, 2010 · 4 comments

in Uncategorized

Recent test takers report question #38 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

38. In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under 37 CFR 1.191(a), but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:
(A) requests unofficial consideration by the examiner.
(B) is less than six pages long.
(C) removes issues from appeal.
(D) presents more specific claims, because it is believed that they may have a better chance of being allowable even though the claims do not adopt the examiner’s suggestions.
(E) introduces new issues, allowing the examiner to rethink his position.



ANSWER: (C) is the most correct answer. See 37 CFR § 1.116; MPEP § 1207, first paragraph. Answers (A), (B), and (D) are purely fictional. With respect to answer (E), see MPEP § 1207, first paragraph.

{ 4 comments… read them below or add one }

1 StephenNo Gravatar August 12, 2010 at 8:11 pm

I found the answer to this question in 714.13 under “II. Entry Not A Matter of Right.” I couldn’t find it in 1207.

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2 PHOSITANo Gravatar March 1, 2011 at 4:19 pm

Or… 714.12 Amendments >and Other Replies< After Final Rejection or Action

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3 VinNo Gravatar March 2, 2011 at 9:03 pm

The only location that has the language that can direct you to the answer is 714.13 under “II. Entry Not A Matter of Right.”, the language being “removes issues for appeal” I could not reach this answer using 1207, first paragraph, nor 714.12>>> !?!

As an aside and interestingly, 1207 (a)(2) refers to an Examiner’s Answer to an appeal brief may include new grounds of rejection.

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4 ELSNo Gravatar March 5, 2011 at 3:18 pm

FYI, I think the version of the MPEP tested at the time of this question (E8R1?) contained the following section, explaining the confusion above:

1207 Amendment Filed With or After Appeal

To expedite the resolution of cases under final rejection, an amendment filed at any time after final rejection, but before jurisdiction has passed to the Board (see MPEP § 1210), may be entered upon or after filing of an appeal brief provided that the amendment conforms to the requirements of 37 CFR 1.116 …
Except where an amendment merely cancels claims and/or adopts examiner suggestions, removes issues from appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116 will be expected of all amendments after
final rejection.

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