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Author Topic: I disagree with this answer...  (Read 611 times)

EDCGadgetGeek

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I disagree with this answer...
« on: 12-31-17 at 04:17 pm »

The correct answer to this question is "E."  I do not understand why it is not "C" though.  Claims 1-10 have been rejected 2x - the first time in a non-final, and then a second time in the final.  See bolded text.
"
A registered practitioner filed a first patent application wherein claims 1-10 claims are directed to a widget and claims 11-20 are directed to a method of making a widget. Following a proper restriction requirement, claims 1-10 were elected for prosecution. The primary examiner rejected claims 1-10. The practitioner filed a reply that only consisted of argument. The examiner was unpersuaded by the argument, and entered a final rejection of claims 1-10. In reply, the practitioner filed a continuing application containing claims 1-10 directed to a widget, and claims 11-20 directed to a method of using a widget. In the continuing application, the examiner enters a new written restriction requirement requiring a provisional election between claims 1-10 and claims 11-20. The practitioner believes the new restriction requirement is improper and would like the rejection in the parent application reviewed as well. The new restriction requirement has not been made final. Which of the following best describes whether and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, the reply to the restriction requirement may be by appeal to the Board of Patent Appeals and Interferences?

   A   Yes. An immediate appeal to the Board can be filed to review the restriction requirement if any claims have been twice rejected.
   B   No. An immediate appeal cannot be filed to the Board because the new claims directed to a method of using a widget have not been twice rejected.
   C   Yes. An immediate appeal can be filed for any claims that have been twice rejected because the Board can also review any second restriction requirement made against the same claims.
   D   No. An immediate appeal to the Board cannot be lodged because a provisional election has not been made of either the claims to a widget or claims to a method of use of the widget.
   E   No. An immediate appeal cannot be taken because no claims are currently under rejection. Review of a final restriction requirement is only possible as a petitionable matter before a Technology Center Director. It is not an appealable matter to the Board.
"
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ThomasPaine

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Re: I disagree with this answer...
« Reply #1 on: 12-31-17 at 09:58 pm »

The question is about the reply to the restriction in the continuation.  There is no rejection in the continuation yet and you cannot appeal a restriction requirement. 
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ThomasPaine

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Re: I disagree with this answer...
« Reply #2 on: 12-31-17 at 10:04 pm »

Answer C is also wrong because the Board cannot review restriction requirements. 
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snapshot

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Re: I disagree with this answer...
« Reply #3 on: 12-31-17 at 11:52 pm »

I agree with TP.  E. is the correct answer.  Restrictions that are not agreed with need to be made final first, and then can only be petitioned.
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fewyearsin

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Re: I disagree with this answer...
« Reply #4 on: 01-01-18 at 01:03 pm »

C is wrong because Restrictions are not appealable.  Redress for improper Restrictions is through a petition.  Anything else in answer C doesn't matter, because the Restriction portion is wrong.  It's a classic multiple-choice test strategy.  Mix a bit of truth with some error to try and throw off the test-taker.  But a "half-wrong" answer is a completely wrong answer.
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ThomasPaine

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Re: I disagree with this answer...
« Reply #5 on: 01-02-18 at 03:08 pm »

"It's a classic multiple-choice test strategy.  Mix a bit of truth with some error to try and throw off the test-taker."

There is nothing about answer C that is even a "bit of truth."

"But a 'half-wrong' answer is a completely wrong answer."

Answer C is not "half-wrong."  It is completely wrong.
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fewyearsin

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Re: I disagree with this answer...
« Reply #6 on: 01-02-18 at 04:04 pm »

The "bit of truth" is that you can appeal rejected claims on a continuation and count the rejection in the parent so that you get claims that are "twice rejected" in an application even though they have not, in fact, been rejected twice in that single application.
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snapshot

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Re: I disagree with this answer...
« Reply #7 on: 01-03-18 at 02:30 am »

The "bit of truth" is that you can appeal rejected claims on a continuation and count the rejection in the parent so that you get claims that are "twice rejected" in an application even though they have not, in fact, been rejected twice in that single application.

In this situation, that's incorrect.  None of the claims in the continuation are actively under rejection (they're currently subject to a restriction requirement here), so they CANNOT be appealed.  This comes straight from MPEP 1204, which states, "Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection."
« Last Edit: 01-03-18 at 02:34 am by snapshot »
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Tobmapsatonmi

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Re: I disagree with this answer...
« Reply #8 on: 01-03-18 at 11:09 am »

To the OP: The whole setup is a bunch of smoke and mirrors crap.  Read the actual question first - which involves nothing more than responding to the current restriction requirement -  then go back up and read the setup. 

Once we focus on the actual question, all that crap about the parent, its prior restriction, and its prior rejections that the practitioner "would like... reviewed as well" can be discarded as irrelevant.
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