RCE During Appeal (10.03.36a)

RCE During Appeal (MPEP 700/1200, After Appeal But Before Decision By Board/Withdrawal of Appeal) 10.03.36a

Test takers have noted that Question #36 from October 2003 (AM) patent bar exam is in the Prometric database.

36. A registered practitioner filed a patent application in the Office in 1999. Following examination and a final rejection, the practitioner timely filed a proper notice of appeal and a proper appeal brief in the application wherein claims 1-3 stand rejected, claims 4 and 5, which depend on claim 1, stand objected to as depending from a rejected claim but are otherwise allowable, and claims 6-10 stand allowed. The appeal involves claims 1-3. After the brief was filed but prior to a decision by the Board of Patent Appeals and Interferences, the practitioner filed a request for continued examination (RCE) with a submission in accordance with 37 CFR 1.114 without paying the fee set forth in 37 CFR 1.17(e). In accordance with the patent laws, rules and procedures as related in the MPEP, what effect does the filing of the RCE without the fee set forth in Rule 1.17(e) have on the application under appeal?

(A) The application is abandoned.

(B) The application is still pending and under appeal awaiting a decision by the Board of Patent Appeals and Interferences, because the RCE was improper.

(C) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-3 canceled and claims 4-10 allowed.

(D) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-5 canceled and claims 6-10 allowed.

(E) The appeal is withdrawn; the application is returned to the primary examiner and prosecution is reopened as to claims 1-10.

ANSWER: (D) is the correct answer. See MPEP §§706.07(h), under the heading “X. After Appeal But Before Decision By Board,” and 1215.01. As explained in MPEP § 1215.01, “The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.” Thus, the filing of the RCE without the fee results in the withdrawal of the appeal in this application and passage of the application to issue with the allowed claims 6-10 after the cancellation of both rejected claims 1-3 and claims 4 and 5 which are allowable except for their dependency from rejected claim 1.

(A) is incorrect. As also explained in MPEP § 1215.01, although an application under appeal having no allowed claims will be considered abandoned by the filing of an improper RCE, an application having allowed claims will pass to issue with the allowed claims. Upon withdrawal of appeal, claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP §1215.01. All rejected claims, such as claims 1-3, and claims which are allowable except for their dependency from rejected claims, such as claims 4 and 5, will be cancelled.

(B) is incorrect. As explained in MPEP §706.07(h), under the heading “After Appeal But Before Decision By The Board,” proceedings as to the rejected claims are terminated and the application is passed to issue with the allowed claims, MPEP §1215.01 explains that the filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.

(C) is incorrect for the reasons explained for (A), and because claims 4 and 5 will be canceled.

(E) is incorrect. The RCE, which was filed without the fee, is improper. Thus, as explained in MPEP §706.07(h), under the heading, “After Appeal But Before Decision By The Board,” proceedings as to the rejected claims are terminated and the application is passed to issue with the allowed claims. MPEP §1215.01 explains that the filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.

Test takers also report a second variant that asks about how the applicant can withdraw his appeal once the Examiner’s Answer was filed and have some new prior art considered; and you had to choose between filing an RCE and filing a Continuation.

1215.01 Withdrawal of Appeal – Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen the prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action) and the RCE fee set forth under 37 CFR 1.17(e). Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995, design applications, or reexamination proceedings. […]

To avoid the rendering of decisions by the Board in applications which have already been refiled as continuations, applicants should promptly inform the clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Applicants also should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision.