Q) Amendment after Appeal (4.03.38p)
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.