MPEP 1206: Difference between revisions

From wikilawschool.net. Wiki Law School does not provide legal advice. For educational purposes only.
No edit summary
mNo edit summary
Line 6: Line 6:


{{Statute|37 CFR 41.33. Amendments and affidavits or other evidence after appeal.}}
{{Statute|37 CFR 41.33. Amendments and affidavits or other evidence after appeal.}}
(a)Amendments filed after the date of filing an appeal pursuant  
(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116of this title.
to § 41.31(a)(1) through (a)(3) and prior to the date a brief is  
filed pursuant to § 41.37 may be admitted as provided in § 1.116of this title.


(b)Amendments filed on or after the date of filing a brief  
(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
pursuant to § 41.37 may be admitted:


(1)To cancel claims, where such cancellation does not  
{{Tab1}}(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or</p>
affect the scope of any other pending claim in the proceeding, or


(2)To rewrite dependent claims into independent form.
{{Tab1}}(2) To rewrite dependent claims into independent form.</p>


(c)All other amendments filed after the date of filing an  
(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c).
appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted  
except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i),  
41.50(b)(1) and 41.50(c).


(d)(1) An affidavit or other evidence filed after the date of  
(d)
filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior  
{{Tab1}}(1) An affidavit or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.</p>
to the date of filing a brief pursuant to § 41.37 may be admitted if  
the examiner determines that the affidavit or other evidence overcomes  
all rejections under appeal and that a showing of good and  
sufficient reasons why the affidavit or other evidence is necessary  
and was not earlier presented has been made.


(2)All other affidavits or other evidence filed after the  
{{Tab1}}(2) All other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).</p>
date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3)  
will not be admitted except as permitted by §§ 41.39(b)(1),  
41.50(a)(2)(i) and 41.50(b)(1).
|}
|}


I.AMENDMENTS
'''I. AMENDMENTS'''


A new amendment must be submitted in a separate  
A new amendment must be submitted in a separate paper. Entry of a new amendment in an application on appeal is not a matter of right. The entry of an amendment (which may not include a new affidavit, declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116.
paper. Entry of a new amendment in an application on  
appeal is not a matter of right. The entry of an amendment  
(which may not include a new affidavit, declaration,  
exhibit or other evidence) submitted in an  
application on appeal is governed by 37 CFR 41.33,  
not 37 CFR 1.116.


Amendments filed after the filing of a notice of  
Amendments filed '''after''' the filing of a notice of appeal, but '''prior''' to the date of filing a brief, may be admitted only to:
appeal, but prior to the date of filing a brief, may be  
admitted only to:


(A)cancel claims;
{{Tab1}}(A) cancel claims;</p>


(B)comply with any requirement of form  
{{Tab1}}(B) comply with any requirement of form expressly set forth in a previous action;</p>
expressly set forth in a previous action;


(C)present rejected claims in better form for consideration  
{{Tab1}}(C) present rejected claims in better form for consideration on appeal; or</p>
on appeal; or


(D)amend the specification or claims upon a  
{{Tab1}}(D) amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.</p>
showing of good and sufficient reasons why the  
amendment is necessary and was not earlier presented.  
See 37 CFR 41.33(a).


Amendments filed on or after the date of filing a  
Amendments filed on or '''after''' the date of filing a brief pursuant to 37 CFR 41.37 may be admitted only to:
brief pursuant to 37 CFR 41.37 may be admitted only  
to:


(A)cancel claims, where such cancellation does  
{{Tab1}}(A) cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or </p>
not affect the scope of any other pending claim in the  
proceeding; or  


(B)rewrite dependent claims into independent  
{{Tab1}}(B) rewrite dependent claims into independent form. </p>
form.  


Rewriting dependent claims into independent form  
Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(a)(2) includes the  
as permitted under 37 CFR 41.33(a)(2) includes the  
following situations:  
following situations:  


(A)rewriting a dependent claim in independent  
{{Tab1}}(A) rewriting a dependent claim in independent form by adding thereto the limitations of the parent claim(s); and </p>
form by adding thereto the limitations of the parent  
claim(s); and  


(B)rewriting an independent claim to incorporate  
{{Tab1}}(B) rewriting an independent claim to incorporate therein all the subject matter of a dependent claim, canceling the dependent claim and in conjunction therewith changing the dependency of claims which had depended from the dependent claim being canceled to the amended independent claim that incorporates therein all the subject matter of the now canceled dependent claim.</p>
therein all the subject matter of a dependent claim,  
canceling the dependent claim and in conjunction  
therewith changing the dependency of claims which  
had depended from the dependent claim being canceled  
to the amended independent claim that incorporates  
therein all the subject matter of the now canceled  
dependent claim.


Examiners must respond to all amendments filed  
Any amendment, affidavit or other evidence filed after the mailing of a final Office action and on the same date as the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.116. Any amendment, affidavit or other evidence filed after the mailing of a non-final Office action and on the same date as the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111.
after appeal has been taken and prior to termination of  
the appeal. If the examiner indicates (in the advisory
action) that an amendment would be entered, it is
imperative for the examiner to also state (in the same  
advisory action) how the individual rejection(s) set
forth in the final Office action will be impacted by the  
entry of the amendment except where an amendment
merely cancels claims. If the examiner determines
that an amendment clearly places the application in
condition for allowance, the examiner may enter the
amendment and allow the application. Except for
amendments that meet the conditions set forth above,
all other amendments submitted after the date of filing
a notice of appeal will not be entered except as permitted
by 37 CFR 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c).


See MPEP 714.02, 714.12 and 714.13 for the treatment
'''II. AFFIDAVITS OR OTHER EVIDENCE'''
of amendments, affidavits and other evidence
submitted after the mailing of a final rejection or a
non-final rejection, but prior to the filing of a notice of
appeal under 37 CFR 41.31(a)(1)-(a)(3). Any amendment,
affidavit or other evidence filed after the mailing
of a final Office action and on the same date as the
notice of appeal will be treated by the Office as being
filed prior to the notice of appeal and treated under 37
CFR 1.116. Any amendment, affidavit or other evidence
filed after the mailing of a non-final Office
action and on the same date as the notice of appeal
will be treated by the Office as being filed prior to the
notice of appeal and treated under 37 CFR 1.111.


II.AFFIDAVITS OR OTHER EVIDENCE
Affidavits or other evidence (e.g., declarations or exhibits) submitted after the date of filing a notice of appeal, but prior to the date of filing a brief pursuant to 37 CFR 41.37, may be admitted if the examiner determines that:


Affidavits or other evidence (e.g., declarations or
{{Tab1}}(A) the affidavits or other evidence overcomes all rejections under appeal; and </p>
exhibits) submitted after the date of filing a notice of
appeal, but prior to the date of filing a brief pursuant
to 37 CFR 41.37, may be admitted if the examiner
determines that:


(A)the affidavits or other evidence overcomes all
{{Tab1}}(B) a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made. </p>
rejections under appeal; and  


(B)a showing of good and sufficient reasons why
An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded or returned by the Board for such purpose.
the affidavit or other evidence is necessary and was
not earlier presented has been made.
 
If the examiner determines that an affidavit or other
evidence clearly places the application in condition
for allowance, the examiner may enter the affidavit or
other evidence and allow the application. Except as
noted above, all other affidavits or other evidence
filed after the date of filing a notice of appeal pursuant
to 37 CFR 41.31(a)(1)-(a)(3) will not be admitted
except as permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
 
An amendment, affidavit or other evidence
received after jurisdiction has passed to the Board  
should not be considered by the examiner unless  
remanded or returned by the Board for such purpose.
See MPEP § 1210 and § 1211.02.
 
Note that 37 CFR 41.37(c)(1)(iv) requires a
statement as to the status of any amendment filed subsequent
to the final rejection. See also MPEP § 1205.


<noinclude>{{MPEP Section|1205|1200|1207}}</noinclude>
<noinclude>{{MPEP Section|1205|1200|1207}}</noinclude>

Revision as of 03:52, July 2, 2011

← MPEP 1205 ↑ MPEP 1200 MPEP 1207 →


1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal

37 CFR 41.33. Amendments and affidavits or other evidence after appeal.

(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116of this title.

(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:

(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or

(2) To rewrite dependent claims into independent form.

(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c).

(d)

(1) An affidavit or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.

(2) All other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).

I. AMENDMENTS

A new amendment must be submitted in a separate paper. Entry of a new amendment in an application on appeal is not a matter of right. The entry of an amendment (which may not include a new affidavit, declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116.

Amendments filed after the filing of a notice of appeal, but prior to the date of filing a brief, may be admitted only to:

(A) cancel claims;

(B) comply with any requirement of form expressly set forth in a previous action;

(C) present rejected claims in better form for consideration on appeal; or

(D) amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 may be admitted only to:

(A) cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or

(B) rewrite dependent claims into independent form.

Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(a)(2) includes the following situations:

(A) rewriting a dependent claim in independent form by adding thereto the limitations of the parent claim(s); and

(B) rewriting an independent claim to incorporate therein all the subject matter of a dependent claim, canceling the dependent claim and in conjunction therewith changing the dependency of claims which had depended from the dependent claim being canceled to the amended independent claim that incorporates therein all the subject matter of the now canceled dependent claim.

Any amendment, affidavit or other evidence filed after the mailing of a final Office action and on the same date as the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.116. Any amendment, affidavit or other evidence filed after the mailing of a non-final Office action and on the same date as the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111.

II. AFFIDAVITS OR OTHER EVIDENCE

Affidavits or other evidence (e.g., declarations or exhibits) submitted after the date of filing a notice of appeal, but prior to the date of filing a brief pursuant to 37 CFR 41.37, may be admitted if the examiner determines that:

(A) the affidavits or other evidence overcomes all rejections under appeal; and

(B) a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.

An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded or returned by the Board for such purpose.

← MPEP 1205 ↑ MPEP 1200 MPEP 1207 →
Retrieved from "https://www.wikilawschool.net/w/index.php?title=MPEP_1206&oldid=3183"