Question #1 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
ANSWER: (C) is the most correct answer. MPEP § 2163.06, under the heading “Review Of New Matter Objections And Rejections,” states “[a] rejection of claims is reviewable by the Board of Patent Appeals and Interferences, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.” Answer (C) is not in accordance with the USPTO rules and the procedures set forth in the MPEP. (A), (B) and (D) are incorrect. They are in accord with proper USPTO procedure. See MPEP § 2163.06, under the heading “Review Of New Matter Objections And Rejections.” (E) is not correct because (C) is correct. MPEP § 2163.06.
I think the answer should be (D). When there has been both a rejection and objection, it should be appealable, and should not be decided by petition.
The call of the question asks for statements NOT in accordance with proper USPTO rules and procedures. Answer (D) is stated directly in rules as evidence by the answer given. Therefore, (C) is the correct answer because it is NOT in accordance with USPTO. Those calls of the questions get me every time too!