Q) New Matter (04.03.21a)

by admin on April 10, 2010 · 2 comments

in Exam Questions

Question #1 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

21. Assuming that any rejection has been properly made final, which of the following statements is not in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) An objection and requirement to delete new matter from the specification is subject to supervisory review by petition under 37 CFR 1.181.
(B) A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board of Patent Appeals and Interferences.
(C) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the primary examiner, the new matter issue should be decided by petition, and is not appealable.
(D) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the examiner, the new matter issue is appealable, and should not be decided by petition.
(E) None of the above.



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.

{ 2 comments… read them below or add one }

1 HSNo Gravatar July 20, 2010 at 4:55 pm

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.

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2 LLINo Gravatar August 3, 2010 at 5:06 pm

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!

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