Real scenario:
2/14/2011 Final OA mailed. Some claims 'allowable', some finally rejected. Client can't decide to take and file CON or fight on.
8/14/2011 6 mo statutory period set to expire.
8/08/2011 Client decides to "take the money and run". Telecon with Examiner who, sua sponte, offers to do an Examiner's amendment to cancel finally rejected claims, getting her allowance. Offer accepted. Something tells me to ask about extension fee. I'm told no fee due. I never filed a Reply and, if a Notice of Allowance is posted on or before 8/14/2011 (I check 3 times a day), I'll have an Office action "indicating otherwise". R 135. As I read R 136 and 135 together, I feel "OK". But the only thing that separates me from a required fee is the fact that I never filed a Reply, I just had a telephonic interview w/ the Examiner. No further Reply to an Office Action so I appear to be off-the-hook re: "applicant's summary" (no paper to be filed).
Q1: Is a Notice of Allowance and Issue Fee Due an "Office Action" within the meaning of R 135?
Q2: Is an extension fee really not due? (take-over case, no blanket authorization on file)
Hummphf! I'm just not sure, either. It does occur that in some cases a t/c resulting in allowance following a rejection/OA could be viewed as a case of the examiner withdrawing the earlier rejection. But I don't think that is the case here - not so much a withdrawal of the prior rejection as your client acquiescing to the terms stated in that rejection.
So, then, why isn't your t/c with the Examiner a "Reply" to the OA? You notified the examiner that your client was willing to take the allowable subject matter and cancel (have canceled by examiner) the finally rejected claims. You did not do this in writing, but it still seems like a Reply to the OA. The fact that the Examiner was willing to do the paper chase part of it wouldn't seem to negate this.
I'd say you replied during the 3rd extended month and owe a 3-month extension fee. Just my 2 cents; I'm frequently on the wrong end of a bet.
But looking
forward ahead {edited for clarity} to your overall situation - if nearing COB next Monday (last day of your 6-month period) with no NOA/IFD in PAIR, do you file the 3-month extension and Notice of Appeal? (That would be my plan...)
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