Question: In an original patent application having Claims 1 through 10, where Claims 1 and 4 are independent claims, a primary examiner properly rejected Claims 1-5 under 35 U.S.C. § 112, second paragraph, and Claims 4-10 under 35 U.S.C. § 103 over a combination of prior art references. The Office action set a three month shortened statutory period for reply. A patent practitioner's reply (both amendment and arguments) addressed the rejections of Claims 4-10 under 35 U.S.C. § 103 and of Claims 4 and 5 under 35 U.S.C. § 112, but failed to reply to the rejection of Claims 1-3 under 35 U.S.C. § 112, second paragraph. Which of the following does not comply with PTO practice and procedure regarding the reply?
A. If the Office action was a non-final Office action on the merits dated January 12, 1998, and the reply was filed on Monday, April 13, 1998; then the examiner, in a communication dated April 17, 1998, may properly call attention to the omission of a reply to the rejection of Claims 1-3, and set a one month shortened statutory period to complete the reply, and the practitioner may properly avoid abandonment of the application by filing on Tuesday, October 17, 1998, a request and fee for a five month extension of time, and a reply to the rejection of Claims 1-3 under 35 U.S.C. § 112, second paragraph.
B. If the Office action was a final Office action dated January 12, 1998, and the reply was filed on Monday, April 13, 1998, and in an Advisory action dated April 20, 1998, the examiner informed the practitioner that the amendment in the reply did not prima facie place the application in condition for allowance; then the practitioner may properly avoid abandonment of the application by filing, on July 10, 1998, a notice of appeal and appeal fee.
C. If the Office action was a non-final Office action on the merits dated January 12, 1998, and the reply was filed on Monday, April 13, 1998; then the primary examiner, in a communication dated April 17, 1998, may properly call attention to the omission of a reply to the rejection of Claims 1-3 and set a one month shortened statutory period to complete the reply, and the practitioner can properly achieve copendency between the application and a continuing application by filing a request and filing fee for a continued prosecution application on or before May 13, 1998, all without completing the reply.
D. If the Office action was a second, final Office action on the merits dated September 9, 1997, and the reply was filed on March 9, 1998, together with a request and fee for a three month extension of time, and if the examiner informed the practitioner in the second, final Office action that the same rejection of Claims 1-3 under 35 U.S.C. § 112, second paragraph, had been made in the first, non-final Office action and that there was an omission of a reply to the rejection of Claims 1-3 in the practitioner's reply to the first, non-final Office action; then the examiner may properly determine that the omission in the reply filed on March 9, 1998, was not inadvertent, so inform the practitioner in an Advisory action, and the application becomes abandoned for an incomplete reply.
(category: patent，Chinese translation: 专利)