Q) Reply to non-final rejection (10.03.21p)

by admin on April 13, 2010 · 2 comments

in Exam Questions

Recent test takers report that question #21 from the October 2003 (PM) test is in the patent bar exam database.

21. Which of the following would comply with the patent laws, rules and procedures as
related in the MPEP and would be a fully responsive reply to a non-final Office action on the
merits rejecting all the claims in the application as being unpatentable under 35 USC 102 and/or
103 over prior art references?
(A) A timely filed and properly signed written reply which does not include an
amendment to the claims, but includes a request for the examiner’s rejections to
be reconsidered supported by arguments replying to every ground of rejection and
distinctly and specifically points out the supposed errors in every rejection. and
pointing out the specific distinctions believed to render the claims patentable over
any applied references.
(B) A timely filed and properly signed written reply which includes an amendment
canceling all the claims in the application and adding new claims, and a request
for the examiner’s rejections to be reconsidered in view of the newly presented
claims.
(C) A timely filed and properly signed written reply which does not include an
amendment to the claims, but does generally alleges that the claims define a
patentable invention.
(D) A timely filed and properly signed written request for continued examination
(RCE).
(E) All of the above.

ANSWER: (A) is the most correct answer. 37 CFR § 1.111; MPEP § 714.02. Section 1.111 states in pertinent part: “(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, … must reply and request reconsideration or further examination, with or without amendment. … (b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. …The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.” MPEP § 714.02 states “In all cases where reply to a requirement is indicated as necessary to further consideration of the claims … a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.” (B) and (C) are not the most correct answers. 37 CFR § 1.111; MPEP §§ 714.02 and 714.04. Neither reply specifically points out the supposed errors in the examiner’s action and neither reply present arguments pointing out how the newly presented claims overcome the rejections. (D) is not the most correct answer. See 37 CFR § 1.114. A request for continued examination can only be made if prosecution of an application is closed. In this question the Office action is a non-final office action. (E) is not the most correct answer since (A) is correct and (B), (D) and (D) are incorrect.

{ 2 comments… read them below or add one }

1 WILLIAM LAVALLEENo Gravatar March 1, 2012 at 9:49 am

Ihave a question when they get a non-final rejectin twice . What does this actually mean . And is this typical .

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2 jkpatentlawNo Gravatar June 17, 2012 at 12:48 pm

The examiner will give a non-final rejection initially if he/she is not convinced that the claims are patentable. Then the applicant has a time to respond to the non-final rejection. The examiner will review the applicant’s response. If he/she is convinced at this time the claims are patentable, he/she will withdraw some/all of the rejections and pass the claims along for a patent. If the examiner is not convinced, the examiner issues a second (final rejection). Now the application has 6 months left to live. The applicant can respond with an amendment and try to convince the examiner, but usually at this time, the examiner is pretty convinced that the claims are not patentable. Applicants usually file a notice of appeal and either then file a continuation of some sort to keep the original filing date or they will file an appeal brief where the Board will review the examiner’s decisions.

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