700 Examination of Applications

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700 Examination of Applications

706.07(a) Could Possibly Reference 1207.03(a)

706.07(a) discusses the fact that an action cannot be made final if a new ground of rejection is not necessitated by amendment and/or Applicant's IDS. However, it provides no information pertaining to what actually constitutes a new ground of rejection. The MPEP Appeal section; however, 1207.03(a), provides substantive guidance on what constitutes a 'new rejection' in an Examiner's Answer which appears also to be applicable ...more »

Submitted by (@patricia.leith)
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700 Examination of Applications

Error and/or ambiguity in 704.13: Time Periods for reply

The second paragraph of this section states that "Applicant may extend the time period of reply up to six months in accordance with 37 CFR 1.136(a)." As this is a paragraph describing the mailing of a requirement for information that is NOT part of an action on the merits, it is unclear to me whether the maximum statutory period for reply of six months is applicable. Regardless, as drafted it seems ambiguous to me; ...more »

Submitted by (@rellinger)
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700 Examination of Applications

Typo in 706.02(f)(1): date of changeover from FTI to FITF

The second paragraph of MPEP 706.02(f)(1), section II (the bottom of the right column on page 700-37) reads "all references to 35 USC 102 in the examples and flowcharts below are to the version of 35 USC 102 in effect on March 15, 2012 (the pre-AIA version)." While this is technically true, I believe that "March 15, 2012" was intended to read "March 15, 2013," one day before the first-inventor-to-file provisions of the ...more »

Submitted by (@rellinger)
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700 Examination of Applications

Strange errors in 708.02(c)

The first (of two) paragraphs of section 708.02(c) (bottom of left column, page 700-175) contains several errors. I will just copy the erroneous text, but it includes capitalization errors, run-on sentences, and a mis-spelled word. Further, this section refers to an 'OSF' and 'OFF' without any local reference to what, specifically, those initialisms refer to. examination will not entitle the applicant to a refund of ...more »

Submitted by (@rellinger)
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700 Examination of Applications

714.01(e) should be placed under its own sub-section

As it stands, 71401(e) describes in detail practice and procedure relating to 'Amendments before first Office action' (per the subsection title). However, section 714.01 (and the other subsections thereof, 714.01(a)-(d)) refer primarily to requirements for signature of amendments. It seems to me that the content of 714.01(e) should be moved to it's own section of chapter 700, or made a subsection of a more applicable ...more »

Submitted by (@rellinger)
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700 Examination of Applications

Clarity Needed on Second Non-Final According to 706.07(a)

In the case the examiner must withdraw finality of an improper Final rejection, I understand that the Office takes the position that, despite the fact the First Non-Final Rejection was proper, the "second or any subsequent" action may not be made Final if not necessitated by amendments or IDS with its fees/period clauses. However, it absolutely does not make any sense why the examiner should reopen prosecution when amendments ...more »

Submitted by (@mercymedicalmi)
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700 Examination of Applications

706.07(h) references 37 CFR 1.304, omits 1214.07

In 706.07(h), XI.A. (p. 700-135, Nov. 2015): - The text references 37 CFR 1.304 (left column, bottom). However, the AIA removed and reserved that section (https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e326176). Would you please correct the reference? - The text does not reference MPEP 1214.07, although 1214.07 does reference 706.07(h), XI. See p. 1200-60 (Nov. 2015). Would you please add the ...more »

Submitted by (@chrisw)
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