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e-CFR data is current as of November 19, 2020

Title 37Chapter ISubchapter APart 1Subpart B → §1.116


Title 37: Patents, Trademarks, and Copyrights
PART 1—RULES OF PRACTICE IN PATENT CASES
Subpart B—National Processing Provisions


§1.116   Amendments and affidavits or other evidence after final action and prior to appeal.

(a) An amendment after final action must comply with §1.114 or this section.

(b) After a final rejection or other final action (§1.113) in an application or in an ex parte reexamination filed under §1.510, or an action closing prosecution (§1.949) in an inter partes reexamination filed under §1.913, but before or on the same date of filing an appeal (§41.31 or §41.61 of this title):

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

(c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under §1.135, or the reexamination prosecution from termination under §1.550(d) or §1.957(b) or limitation of further prosecution under §1.957(c).

(d)(1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under §1.953 except as provided in §1.981 or as permitted by §41.77(b)(1) of this title.

(2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§1.113) in an ex parte reexamination filed under §1.510, or an action closing prosecution (§1.949) in an inter partes reexamination filed under §1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in §1.981 or as permitted by §41.77(b)(1) of this title.

(e) An affidavit or other evidence submitted after a final rejection or other final action (§1.113) in an application or in an ex parte reexamination filed under §1.510, or an action closing prosecution (§1.949) in an inter partes reexamination filed under §1.913 but before or on the same date of filing an appeal (§41.31 or §41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.

(f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under §1.953 except as provided in §1.981 or as permitted by §41.77(b)(1) of this title.

(g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§1.198 and 1.981, or to carry into effect a recommendation under §41.50(c) of this title.

[69 FR 49999, Aug. 12, 2004]

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