MPEP Section 1213.01, Statement **>by Board of How an Appealed Claim May Be Amended To Overcome a Specific Rejection<
Executive summary:
This document contains Section 1213.01 ("Statement **>by Board of How an Appealed Claim May Be Amended To Overcome a Specific Rejection<") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.
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1213.01 Statement **>by Board of How an Appealed Claim May Be Amended To Overcome a Specific Rejection< [R-3]
**>37 CFR 41.50 Decisions and other actions by the Board.
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(c) The opinion of the Board may include an explicit statement of how a claim on appeal may be amended to overcome a specific rejection. When the opinion of the Board includes such a statement, appellant has the right to amend in conformity therewith. An amendment in conformity with such statement will overcome the specific rejection. An examiner may reject a claim so-amended, provided that the rejection constitutes a new ground of rejection.<
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If the Board's decision includes an explicit statement **>how a claim on appeal may be amended to overcome a specific rejection<, appellant may amend the claim in conformity with the statement **. The examiner should make certain that the amendment does in fact conform to the statement in the Board's decision.
The making of a statement under 37 CFR *>41.50(c)< is discretionary with the Board. In the absence of an express statement, a remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat. 1913). >A remark by the Board shall not be construed by appellant to give appellant authority to amend the claim.<
Appellant's right to amend in conformity with the statement under 37 CFR *>41.50(c)< may only be exercised within the period allowed for seeking court review under 37 CFR 1.304. See MPEP § 1216.
>An explicit statement by the Board on how a claim on appeal may be amended to overcome a specific rejection is not a statement that a claim so-amended is allowable. The examiner may reject a claim so-amended, provided that the rejection constitutes a new ground of rejection. Any new ground of rejection made by an examiner following the Board's decision must be approved by a Technology Center Director and must be prominently identified as such in the action setting forth the new ground of rejection.<