Q) Board of Appeals Remanding case to the Examiner (4.03.25a)

by admin on April 10, 2010 · 19 comments

in Exam Questions, Uncategorized

Question #25 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.


25. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?
(A) Remand for a fuller description of the claimed invention.
(B) Remand for a clearer explanation of the pertinence of the references.
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
(D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief.



ANSWER: (D) is the most correct answer. See MPEP § 1211.02. (D) is not a proper basis for remand because the Board has no authority to require the examiner to consider an affidavit which has not been entered after final rejection and which was filed while the application was pending before the examiner. Pursuant to 37 CFR § 1.195, “[a]ffidavits…submitted after the case has been appealed will not be admitted without a showing of good and sufficient reasons why they were not earlier presented.” The facts are silent regarding whether such a showing was made. However, as discussed in MPEP § 715.09, “Review of an examiner’s refusal to enter [and consider] an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).” Thus, remand by the Board cannot be expected. Support for each of answers (A), (B), (C) and (E) is specifically provided for in MPEP § 1211.

{ 19 comments… read them below or add one }

1 newtopatentbarNo Gravatar April 22, 2010 at 12:16 am

Hello, Maybe I have missed it. But I was not able to find the corresponding description for answer A from MPEP 1211.02. Can somebody help me here? Thanks

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2 SallyNo Gravatar April 22, 2010 at 10:28 am

Hello newtopatentbar,

Yes, you are quite correct. The current patent bar exam is based on the MPEP 8th edition, Revision 4 which was released in October 2005. Answer A in this question appears to be from an older version of the MPEP. The 8th edition rev 2 released in May of 2004 states:
“1211 Remand by Board
The Board has authority to remand a case to the
examiner when it deems it necessary. For example,
the Board may remand for a fuller description of the
claimed invention and, in the case of a machine, a
statement of its mode of operation.”
This was removed in Rev 3 and subsequent revisions.
For the exam, one approach might be to just know that Remand by Board is MPEP 1211 and plan on looking this one up quickly. Questions of this type are really 5 true/false questions and you need to get all 5 correct to come up with the right answer.

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3 lanceNo Gravatar August 10, 2010 at 9:22 pm

Thanks. This one threw me off too, as I couldn’t find A spelled out. Intuitively, it makes sense that the board can remand to get clarification on the claim itself, but I’m training myself not to make assumptions and stick with what is spelled out in the MPEP…you know what they say about when you assume…

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4 lanceNo Gravatar October 7, 2010 at 3:05 pm

In fact, D IS in accordance with the latest MPEP, 1211.03:

“Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP § 715.09, § 716, and § 716.01. >If such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.<"

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5 AnandNo Gravatar November 29, 2010 at 1:55 pm

So based on what lance has pointed out, all there is no correct answer to this question given the possible answer choices. Right?

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6 LawrenceNo Gravatar December 10, 2010 at 7:10 pm

Seems so Anand. I was having some trouble with this problem too, but reading the comments here really helped clear up things, especially regarding choice A.

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7 AngelaNo Gravatar February 14, 2011 at 6:55 pm

Based on lance’s quote, the board will remand a case based on later submitted affidavits, “If such evidence has not been treated by the examiner”. But in (D), the affidavits have been considered by examiner but not entered. So (D) is the answer.

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8 narfNo Gravatar February 23, 2011 at 2:36 pm

I concur with Angela. 1211.03 has been revised, but 715.09 still states “Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences.”

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9 PeggyNo Gravatar October 23, 2012 at 5:57 pm

I don’t think this provision necessarily precludes the possibility that the board could remand.

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10 SoBeNo Gravatar October 16, 2011 at 1:51 am

As to choice (D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.

I think this a true statement, and thus an incorrect answer, per MPEP 8ER8. Check out the last sentence:

1211.0312061.116(e)are necessary andIf such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.<

Also, I cannot find answer choice (A) anywhere, so that might be the improper choice, and thus the right answer.

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11 SoBeNo Gravatar October 16, 2011 at 1:57 am

The MPEP section did not post correctly, just look at 1211.03 “Remand by Board to Consider Affidavits or Declarations”. Specifically, first paragraph, last sentence which reads:
“If such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.”

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12 maggieNo Gravatar October 16, 2011 at 6:49 pm

25. Which of the following is NOT a proper basis on which the BOARD of Patent Appeals and Interferences MAY REMAND a case to the EXAMINER?

(A) Remand for a fuller description of the claimed invention. (Can’t find this one in 1211; However, 1212: Appellant to address Matter. –> remand by Board to examiner after appellant response for any matter deemed appropriate by Board YES OK 1212)
(B) Remand for a clearer explanation of the pertinence of the references (YES OK 1211).
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner. (YES OK 1211)
(D) Remand to the primary examiner with instructions to consider an affidavit (not entered by the examiner) which was (filed after the final rejection but before the appeal) (YES OK 1211.03 ).
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief. (YES OK 1211)

(NOTE on D) 1211.03 If such evidence HAS NOT been treated by examiner , then Board MAY remand to examiner to consider such evidence.

To Narf post: “Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences.” –>This is the WRONG CALL of Q (SEE CAPS ABOVE in Q WHAT BOARD DOES NOT APPELLANT).

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13 SoBeNo Gravatar October 16, 2011 at 7:02 pm

Thank you.

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15 HSNo Gravatar November 18, 2011 at 9:22 pm

Choice D is not the right answer, see below.

MPEP 1211.03
Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP § 715.09, § 716, and § 716.01. >If such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.<

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16 MirandaNo Gravatar March 17, 2012 at 4:46 pm

The pivotal Q seems to be whether “not entered”=”not treated”
It seems to me that (D) is still the correct answer since it appears that the examiner DID “treat” the affidavit by deciding not to enter it…

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17 SolNo Gravatar April 1, 2012 at 12:00 am

I agree.The Examiner needs to treat the submitted affidavit or other evidence but also has the authority to refuse its entry.

“(e)An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.”

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