1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal [R-01.2024]

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.

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. See 37 CFR 41.33(a).

If the examiner denies the entry of such an amendment, the examiner should use form PTOL-303, “Advisory Action Before the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.

Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 and within the time period set forth in 37 CFR 90.3may 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.

An amendment filed on the same date as a non-compliant appeal brief is considered an amendment filed pursuant to 37 CFR 41.33(b) regardless of whether an amended appeal brief is filed after the date of the submitted amendment.

The submission of an amendment after the filing of a non-compliant brief will be considered under 37 CFR 41.33(b). For example, applicant files a notice of appeal and an appeal brief on July 14, 2022. Applicants files an amendment under 37 CFR 41.33(b) on August 19, 2022. In response to a notice of defective appeal brief, applicant timely files an amended brief on September 19, 2022. The filing of the amendment on August 19, 2022, will be considered under 37 CFR 41.33(b) and not under 41.33(a). If prosecution is reopened, then the filing of the non-complaint appeal brief on July 14, 2022, would not be used to determine whether the amendment was filed after the filing of the appeal brief.

37 CFR 41.37(c)(2) provides that a brief shall not include any non-admitted amendment. Thus, appellants may not include an amendment under 37 CFR 41.33(b) in the appeal brief. Should appellants wish to file an amendment at the same time as a brief, appellants must submit such an amendment in a paper separate from the appeal brief.

Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(b)(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.

Amendments filed after jurisdiction of the appeal is transferred to the Board are not considered prior to the expiration of the time period set forth in 37 CFR 90.3 unless the case is remanded by the Board for consideration of the amendment. If an amendment is considered non-compliant the applicant may not be granted additional time to submit a substitute amendment. As such, it is recommended that appellant rewrite dependent claims, which have been objected to as being allowable except for their dependency on a rejected independent claim, before the appeal is forwarded to the Board. Such amendments must be filed before the expiration of the time period set forth in 37 CFR 90.3, to avoid cancellation of the objected to claims. This includes dependent claims in which the rejections are withdrawn by the examiner in the Examiner’s Answer. See MPEP §§ 1214.06 and 1214.07.

If the examiner denies entry of an amendment filed on or after the date of filing a brief, the examiner should use form PTOL-304, “Advisory Action After the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.

Examiners must respond to all amendments filed after an appeal has been taken and prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a). 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 or rewrites dependent claims in independent form. 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) and 41.50(b)(1).

See MPEP §§ 714.02, 714.12 and 714.13 for the treatment 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). Any amendment, affidavit or other evidence filed after the mailing date of a final Office action and on or before the date of 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 date of a non-final Office action and on or before the date of 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.

An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded for that purpose. See MPEP §§ 1210 and 1211.02.

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.

If the examiner denies the entry of such an affidavit or other evidence, the examiner should use form PTOL-303, “Advisory Action Before the Filing of an Appeal Brief,” to notify the applicant of the non-entry and the reason for non-entry.

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.

Information Disclosure Statements submitted after the date of a notice of appeal are normally held in abeyance pending a decision on the appeal. Consideration of Information Disclosure Statements is based on MPEP § 609 and 37 CFR 1.97 and 1.98 and not on 37 CFR 41.33.

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