Recent test takers report question #42 from the October 2003 (a) exam is in the Patent Bar database of tested questions.
42. A registered practitioner filed a first patent application wherein claims 1-10 claims are directed to a widget and claims 11-20 are directed to a method of making a widget. Following a proper restriction requirement, claims 1-10 were elected for prosecution. The primary examiner rejected claims 1-10. The practitioner filed a reply that only consisted of argument. The examiner was unpersuaded by the argument, and entered a final rejection of claims 1-10. In reply, the practitioner filed a continuing application containing claims 1-10 directed to a widget, and claims 11-20 directed to a method of using a widget. In the continuing application, the examiner enters a new written restriction requirement requiring a provisional election between claims 1-10 and claims 11-20. The practitioner believes the new restriction requirement is improper and would like the rejection in the parent application reviewed as well. The new restriction requirement has not been made final. Which of the following best describes whether and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, the reply to the restriction requirement may be by appeal to the Board of Patent Appeals and Interferences?
(A) Yes. An immediate appeal to the Board can be filed to review the restriction requirement if any claims have been twice rejected.
(B) No. An immediate appeal cannot be filed to the Board because the new claims directed to a method of using a widget have not been twice rejected.
(C) Yes. An immediate appeal can be filed for any claims that have been twice rejected because the Board can also review any second restriction requirement made against the same claims.
(D) No. An immediate appeal to the Board cannot be lodged because a provisional election has not been made of either the claims to a widget or claims to a method of use of the widget.
(E) No. An immediate appeal cannot be taken because no claims are currently under rejection. Review of a final restriction requirement is only possible as a petitionable matter before a Technology Center Director. It is not an appealable matter to the Board.
ANSWER: (E) is the most correct answer. MPEP § 1002.02(c) identifies among the matters petitionable to and decided by the Technology Center Directors “Petitions from a final decision of examiner requiring restriction in patent applications, 37 CFR 1.144, MPEP § 818.03(c).” Hence (A), and (C), which provide for review before the Board of Patent Appealsand Interferences are clearly erroneous. Since the restriction requirement is not yet “final” no review is possible at this juncture. Answers (A), (B), (C), and (D) are also incorrect because no claim is under rejection hence no appeal is possible. See MPEP § 1205, which provides that under 37 CFR 1.191(a), an applicant for a patent dissatisfied with the primary examiner’s decision in the second or final rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee set forth in 37 CFR 1.17(b) within the time period provided under 37 CFR 1.134.and 1.136. A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of “twice or finally…rejected” does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application.
Just to be clear:
Claims 1-10 were twice rejected in the parent application. Applicant could have filed a Notice of Appeal at that time. Instead he/she filed a continuation and reintroduced claims 1-10. Even though claims 1-10 have been twice rejected, they are NOT currently under rejection in the continuation and therefore appeal is not possible.
Is this correct? I had assumed (I guess incorrectly) that if any claim(s) are twice rejected they can be appealed. Thx
Yes, you’re correct, Claims must be currently under a rejection and twice rejected to appeal. Because they haven’t yet been rejected in the continuation, they can’t be appealed in the continuation.
MPEP 1204: “For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection. Accordingly, applicant cannot file a notice of appeal with an RCE regardless of whether the application has been twice rejected prior to the filing of the RCE.”
Any claims which has been twice rejected can be appealed. However, filing of RCE is treated as a request to withdraw appeal and reopen prosecution.See CFR 1.114
The logic is that the Board and the examiner cannot simultaneously have jurisdiction over the claims. If that was allowed, it can result in conflicting results, i.e. the examiner can allow the claims after RCE and the board may affirm rejection.
I understand your RCE discussion. A RCE will be treated as a request to withdraw appeal and reopen prosecution only if the applicant had previously filed an appeal (jurisdiction has transferred). In this fact pattern, however, a RCE is not involved. After being twice rejected, the applicant filed a continuation. It is still within the jurisdiction of the examiner.
I guess my original question is that even though claims have been twice rejected, does a rejection have to occur again in the continuation? The continuation is treated as a new application and therefore the twice rejection doesn’t transfer over? Thanks
The facts in this questions point that the prosecution of this application is closed. After that, the only way in my opinion to file a continuing prosecution application is by filing an RCE.
“Accordingly, applicant cannot file a notice of appeal with an RCE regardless of whether the application has been twice rejected prior to the filing of the RCE.” 1204.I
The questions mentions that a restriction requirement was made in the continuing application. Since the restriction requirement is not a rejection, it can not be appealed.
This threw me off, too, since claims 1-10 had been twice rejected. But if you look at the call of the question, it specifically says “Which of the following best describes whether and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, THE REPLY TO THE RESTRICTION REQUIREMENT may be by appeal to the Board of Patent Appeals and Interferences?”
Also, as Sarah W. stated above, “Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection.” – MPEP 1204
Can you appeal?
1. At the moment, do you need reply to a rejection on a claim?
If Yes, then
2. At the moment, is the rejection of the claim previously made or final?
If Yes, then you can appeal.
In the question, the applicant/agent does not need to reply to a rejection, so no appeal. They need to reply to a restriction requirment, which is not a rejection, so only petition is possible and only possible after the restriction requirment is made final.
Got this one, verbatim 9.22.11
Had this Q on 2/10/2012
Robbie is right-you must look carefully at the call of the question here. The proper MPEP citation for the correct answer is now 1207.03 not 1208.01, if it helps anyone. Search “minor capacity” under chapter 1200 and you will go right to it. The key here is any prior art relied on by the examiner to make a rejection must be included in the ORIGINAL STATEMENT OF REJECTION, not just cited as support (which the Brown reference wasn’t in this case anyway).
Got this one 3/17/12
Just to clarify a bit more – in order to appeal the claim must be twice rejected. But after your claim has been twice rejected in the parent application, if you choose not to appeal and instead you choose to file a continuation application or RCE then you lose your right to appeal on the basis of the 2 rejections in the parent application.
However, as soon as any claim that was rejected in the parent application is rejected again during prosecution of the continued application or RCE then you again have the right to appeal (even though only one rejection has been made in the continued application or RCE). This is because the original rejections of the parent will carry over to the continued application or RCE.
Is that correct?
With regard to the restriction requirement, I understand that the restriction requirement is not appealable but must be traversed by petition to the Director. What I don’t understand about the answer that is given above (quoted below) is what difference it makes whether the restriction requirement is final or not? If the restriction requirement were final, would it be possible to appeal it?
“MPEP § 1002.02(c) identifies among the matters petitionable to and decided by the Technology Center Directors “Petitions from a final decision of examiner requiring restriction in patent applications, 37 CFR 1.144, MPEP § 818.03(c).” Hence (A), and (C), which provide for review before the Board of Patent Appealsand Interferences are clearly erroneous. Since the restriction requirement is not yet “final” no review is possible at this juncture.”
Is the Restriction Requirement is a ‘rejection’ against a patent application?
I think NO, because the RR does not have anything to do with a patentability of the patent application.
The Restriction Requirement is a kind of an Office Action, but not a rejection.
For appeal to BPAI, any claims must be twice rejected whether the patent application having the claims is a parent application or not.
Thus, you got a first RR -> choose an election with traverse or without traverse.
If you elect with traverse, you may obtain a final RR.
And then, you can file a petition under 37 CFR 1. 144.
Please feel free to correct me if I am wrong.