Q) Exam Concepts – Appeals

by patentbar on September 2, 2008 · 5 comments

Appeals
1) Definitely know that dependent claims objected for their dependency on a rejected independent claim will be treated as if rejected if appeal doesn’t overcome the independent claim’s rejection (this includes withdrawal of the appeal). The application IS NOT abandoned/allowed right away, but rather goes back to the examiner’s jurisdiction, whereupon he’ll either allow the application with any surviving claims or, if no claims survived, abandon it.
2) Got a few questions on new ground of rejection by the board (not examiner, which surprised me a little, since I thought they’d test this new ground more heavily).
3) Know that after ANY claim has been twice rejected, and you are currently under a rejection, you can appeal.
4) Got an old exam question repeat regarding what happens when an applicant files an RCE with no fee during appeal (treated as a withdrawal of appeal, but since the RCE was improper, the application is abandoned if no claims stand allowed or issued with any allowed claims–all claims dependent on a rejected independent claim will be canceled by the Examiner before he passes the application to allowance).
5) Board remand – I know on the old exam the answer was that the board could not remand to examiner for consideration of an affidavit or amendment. Though there is discussion of how the board could possibly remand for consideration of amendment in E8R4, the old answer’s reasoning still stands (there is no mention in the question facts that the applicant properly stated with the amendment why it was not entered sooner). It seems this is still the answer.

1 patentbar September 4, 2008 at 3:53 pm

There was one question on the exam that really stumped me and I didn’t find the answer after about 8-10 minutes of searching. The question went something like:

“In a design application, which of the following actions will not result in the application becoming abandoned?” Or it could have been “In a design application, which of the following actions will prevent the application from becoming abandoned?” There were no dates or anything like that. That was pretty much the extent of the question. The only answers I can remember were something like:

a) File a reexam
b) File a notice of appeal without the appeal fee
c) File a request for continued examination

I’m new here, been lurking awhile, scheduled to take the test in a little over a week. Since I’ve been nose-down in the MPEP for awhile now, I figured I’d take a crack at providing my thoughts on this question.

(a) Reexam is available for design patents, but is inapplicable to applications. So a request for reexam would be improper in a pending application, and without a proper response, the application would eventually go abandoned.

(b) A notice of appeal without the fee will be rejected, though if the statutory period hasn’t expired this can be cured by filing for an extension of time along with the fee.

(c) RCE is not available in design applications (1502.01); only CPA (which in turn is not available to utility/design applications unless filed prior to 7/14/03 in an app filed prior to 5/29/00). So like a reexam request in this case, an RCE would be improper.

Too bad you can’t remember the other two answers. Of these, (b) appears closer to correct than (a) or (c), but on its face (b) alone won’t prevent abandonment without additional action. Essentially they’re all improper responses

2 T.A. March 23, 2009 at 2:32 pm

Regarding 5) Board remand, see 1211.03:

“Affidavits or declarations filed with ** the filing of a notice of appeal but before jurisdiction passes to the Board (see MPEP § *>12061.116(e)are necessary andIf such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.filing of a notice of appealunless the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented have been made. See MPEP § 1206.41.50(b)41.50(b)< rejection, see MPEP § 1214.01.”

3 Bigbadvoododaddy July 3, 2011 at 3:21 pm: This only applies if the examiner has not considered the amendment.
But if he has and did not enter it – board cannot remand, it has no jurisdiction over that.

4 Becker May 17, 2011 at 3:22 pm