Office action including both an affidavit filed under 37 CFR 1.131 and an affidavit filed under 37 CFR 1.132 may be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) In a timely reply to a non-final Office action, where the examiner’s sole rejection of appellant’s claims is based on an alleged violation of the enablement requirement of 35 USC 112.
(B) In a timely reply to non-final Office action, where the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
(C) In a timely reply to a non-final Office action, where the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a noncommonly owned U.S. patent as prior art under 35 USC 102 (e) that claims the same invention as applicant.
(D) In a timely reply to an examiner’s answer presenting the affidavits for the first time, where in the examiner’s first Office action and final rejection, the examiner maintains the same rejection under 35 USC 103(a) of all of appellant’s claims based in part on a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
(E) In a timely reply to a final Office action presenting the affidavits for the first time, where in the examiner’s first Office action, the examiner’s sole rejection of
appellant’s claims is a rejection under 35 USC 103(a) employing a non-patent
document that was published less than one year prior to the filing date of
appellant’s patent application.

After filing an appeal, it is my understanding that an applicant is definitely not permitted to prosecute the same claims (i.e. the claims under appeal) in a continuation application without first withdrawing those claims from appeal. How do you 'refile as a continuation" without first withdrawing from an appeal by way of a proper RCE? The way I understand it, you have to file a proper RCE withdrawing claims from appeal, then continuation is possible. Doesn't this mean that you are, in fact, estopped from further prosecuting the same claims in a continuation application after you file a notice of appeal, making choice (D) a true statement?

(A) is the problem – Claiming earlier foreign priorty could overcome publication type 102(b), but not 1 year pulic use/sale bar.

(B) is wrong for sure.

(C) is correct for sure.

28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made in the original patent.

The answer given at that time is (E), but I think (C) is the correct answer NOW. The rule changed (in 2004?).

2003 Oct PM Q22

22. Which, if any, of the following statements is in accord with the patent laws, rules and
procedures as related in the MPEP?
(A) Where an inventor’s residence is stated correctly in the 37 CFR 1.76 application data sheet and incorrectly in the inventor’s 37 CFR 1.63 oath or declaration, the discrepancy must be corrected by filing a supplemental 37 CFR 1.67 oath or declaration giving the correct residence.
(B) Where two inventors file separate 37 CFR 1.63 oaths or declarations which do not identify both inventors, the USPTO will presume they are joint inventors and will not require new oaths or declarations.
(C) A dependent claim which merely repeats a limitation that appears in the claim on which it depends is properly rejected under the fourth paragraph of 35 USC 112.
(D) In a statement under 37 CFR 1.97(e)(1) specifying that “each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement,” the three-month period begins on the date the communication was first received by either a foreign associate or a U.S. registered practitioner.
(E) None of statements (A) to (D) is correct.

The answer is (E). (C) is incorrect because — MPEP § 608.01(n), under the
heading “II. Treatment Of Improper DependentClaims,” states “[c]laims which are in improper dependent form for failing to further limit the subject matter of a previous claim should be objected to under 37 CFR 1.75(c) by using form paragraph 7.36.” The claim should not be rejected. Further as for (C), MPEP § 608.01(n), under heading “III. Infringement Test,” states “[a] dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to (1) the significance of the further limitation added by the dependent claim, or (2) whether the further limitation in fact changes the scope of the dependent claim from that of the claim from which it depends. The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends. The test is not one of whether the claims differ in scope.”

Mu question is — Does this mean 112, 4th paragraph could only be used to object improper dependant claims, but NEVER be used to reject improper dependant claims?

A. Claiming the Benefit of Provisional Applications

When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovisional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04(b) and § 505.

Public Law 106-113 amended 35 U.S.C. 119(e)(2) to eliminate the copendency requirement for a nonprovisional application claiming benefit of a provisional application. 35 U.S.C. 119(e)(2) as amended by Public Law 106-113 is effective as of November 29, 1999 and applies to any provisional applications filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999. Although a nonprovisional application claiming the benefit of a provisional application is not required to be copending with the provisional application, abandonment of a provisional application for failure to pay the basic filing fee would indicate that the nonprovisional application could not claim the benefit of the provisional application because the basic filing fee was not paid within the time period set forth in 37 CFR 1.53(g) as required by 37 CFR 1.78(a)(4).