Somebody please help clarify this question. I really don't see why answer C is the right answer.... The explanation to the answer doesn't make sense to me. If the final rejection were mailed on Aug 8, then it might be fine.....
Q4, Oct 04 pm
The Office mailed an Office action containing a proper final rejection dated July 8, 2002. The Office
action did not set a period for reply. On January 7, 2003, in reply to the final rejection, a registered
practitioner filed a request for continued examination under 37 CFR 1.114, a request for a suspension
of action under 37 CFR 1.103(c) to suspend action for three months, and proper payment all required
fees. No submission in reply to the outstanding Office action accompanied the request for continued
examination. No other paper was submitted and no communication with the Office was held until after
Midnight, January 8, 2003. Which of the following statements accords with the USPTO rules and the
procedures set forth in the MPEP?
(A) If an appropriate reply is submitted within the three month period of suspension permitted
under 37 CFR 1.103(c), the application will not be held abandoned.
(B) The application will not be held abandoned if an appropriate reply is submitted within the
three month period of suspension and it is accompanied by a showing that the reply could not
have been submitted within the period set in the final rejection. For example, the reply includes
a showing based on an experiment that required 8 months to conduct.
(C) No reply will prevent the application from being held abandoned.
(D) If, on January 10, 2003, the primary examiner and applicant agree to an examiner’s
amendment that places the application in condition for allowance and a notice of allowance is
mailed within the three month period of suspension, application X will not be held abandoned.
(E) No other submission by applicant is necessary because application X is still pending. The
examiner is required to act on the request for continued examination after expiration of the three
month period of suspension.
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ANSWER: (C) is the most correct answer. As stated in MPEP § 709, under the heading “Request By The Applicant,” subheading “Request for Suspension Under 37 CFR 1.103(b) or (c),” “The Office will not grant the requested suspension of action unless the following requirements are met: (A) the request must be filed with the filing of a CPA or an RCE…(1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission.” The RCE was improper because no submission in reply to the outstanding Office action accompanied the RCE. Since the RCE was improper, the Office will not recognize the request for suspension. The time period set in the final rejection continues to run from the mail date of the Office action. Since the Office action did not set a period for reply, applicant has a maximum period of six months for reply. A reply was due on February 8, 2003. Since the RCE was improper and the Office did not recognize the request for suspension, the application became abandoned at Midnight of February 8, 2003. (A), (B) and (E) are not correct. As stated in MPEP § 706.07(h), under the heading “Submission Requirement,” “If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c).” An RCE that is not accompanied by a submission is an improper RCE. As stated in MPEP § 706.07(h), under the heading “Initial Processing,” subheading “Treatment of Improper RCE,” “An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.” The period for filing a proper reply was six months inasmuch as no shortened statutory period for reply was set. A proper reply to the final rejection was not filed. Therefore, the application went abandoned for failure to file a proper reply to the final rejection. (D) is not correct. As set forth in MPEP § 706.07(f) under the heading “Examiner’s Amendments,” paragraph (H), “[a]n examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.”
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