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A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 706.04.
When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a letter is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new reference. This letter should cite the reference, and, if need be, briefly state its application. The letter should be submitted with the reference and the file wrapper. If the examiner's proposed action is not approved, the letter requesting withdrawal from issue should not be placed in the file.
If the request to withdraw from issue is approved, the letter is taken to the Publishing Division and the application is stamped "Withdrawn" over the name stamp and initials of the primary examiner. It is then returned to the TC from which it came; the withdrawal from issue is entered on the PALM system, and the application is thus restored to its former status as a pending application awaiting action by the examiner. The examiner at once prepares an Office action stating that the application has been withdrawn from issue, citing the new reference, and rejecting the claims met thereby.
The action is given a paper number and placed in the file.
If the issue fee has already been paid and prosecution is reopened, the applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a deposit account.
If the issue fee has been paid, the examiner should forward the request to withdraw the application from issue to the Office of Patent Publication after the request is approved by the TC Director. The actual withdrawal will be handled by the Office of Patent Publication and then the application will be returned to the examiner for prompt action as noted above.
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