TMEP 715.04(a): Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed

This is the October 2015 Edition of the TMEP

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715.04(a)    Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed

If the request for reconsideration does not overcome or resolve the issues on appeal, and no new issue, or no new evidence significantly different from that previously submitted, is presented therein, the examining attorney must issue a “Request for Reconsideration Denied – Return to TTAB” (or, if appropriate, “SU ─ Request for Reconsideration Denied ─ Return to TTAB”) action that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome all refusals or satisfy all requirements; (3) identifies the final refusal(s) and/or requirements that are maintained and any that are satisfied or withdrawn; and (4) advises the applicant that the Board will be notified to resume the appeal. An Office action denying reconsideration of the final action must not include a six-month response clause.

If, in a request for reconsideration that does not overcome or resolve the issues on appeal, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.