Amendments and Other Replies After Final Rejection or Action

37 CFR 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.

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.

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.

Once a final rejection that is not premature has been entered in an

application, applicant or patent owner no longer has any right to unrestricted further

prosecution. This does not mean that no further amendment or argument will be

considered. Any amendment that will place the application either in condition for

allowance or in better form for appeal may be entered. Also, amendments filed after a

final rejection, but before or on the date of filing an appeal, complying with

objections or requirements as to form are to be permitted after final action in

accordance with

37 CFR

1.116(b)

. Amendments filed after the date of filing an appeal may

be entered if the amendment complies with

37 CFR 41.33

. See

MPEP §

1206

. Ordinarily, amendments filed after the final action are

not entered unless approved by the examiner. See

MPEP § 706.07(f)

,

§ 714.13

and

§

1206

.

An affidavit or other evidence filed after a final rejection, but before

or on the same date of filing an appeal, may be entered upon a showing of good and

sufficient reasons why the affidavit or other evidence is necessary and was not earlier

presented in compliance with

37 CFR 1.116(e)

. See

37 CFR

41.33

and

MPEP § 1206

for information on

affidavit or other evidence filed after appeal.

Applicant's submissions concerning the prior art

exception under

35 U.S.C. 102(b)(2)(C)

or prior art

disqualification under

pre-AIA 35 U.S.C

on a showing of good and

sufficient reasons why the affidavit or other evidence is necessary and was not earlier

presented in compliance with

37 CFR 1.116(e)

. See

37 CFR

41.33

and

MPEP § 1206

for information on

affidavit or other evidence filed after appeal.

Applicant's submissions concerning the prior art

exception under

35 U.S.C. 102(b)(2)(C)

or prior art

disqualification under

pre-AIA 35 U.S.C. 103(c)

are entitled to being considered even

after a final rejection has been made. If a final rejection of certain claims is

obviated by a timely reply based on a proper claim of entitlement to the prior art

exception or disqualification, then the Office should acknowledge the reply by modifying

the status of the claims. For example, if the only rejection in the final rejection is

obviated by a submission demonstrating entitlement to except or exclude prior art in the

after-final reply, the Office should indicate that the claims are allowable, or

prosecution should be reopened should the claims be considered unpatentable in view of

newly applied prior art. Applicants should be aware, however, that the failure to make a

proper submission of entitlement to except or exclude prior art following the first

Office action may be considered by the Office as conduct that is considered to be a

failure to engage in reasonable efforts to conclude prosecution if such prior art is

thereafter excepted under

35 U.S.C. 102(b)(2)(C)

or

disqualified under

pre-AIA 35 U.S.C. 103(c)

. See

37 CFR

1.704(c)

and the discussion of comment 19 in

Changes To

Implement Patent Term Adjustment Under Twenty-Year Patent Term; Final Rule

,

65 FR 56366, 79 (September 18, 2000).

The prosecution of an application before the examiner should ordinarily be

concluded with the final action. However, one personal interview by applicant may be

entertained after such final action if circumstances warrant

e

37 CFR

1.704(c)

and the discussion of comment 19 in

Changes To

Implement Patent Term Adjustment Under Twenty-Year Patent Term; Final Rule

,

65 FR 56366, 79 (September 18, 2000).

The prosecution of an application before the examiner should ordinarily be

concluded with the final action. However, one personal interview by applicant may be

entertained after such final action if circumstances warrant.

Thus, only

one request by applicant for a personal interview after final should be granted, but in

exceptional circumstances, a second personal interview may be initiated by the

examiner

if in their judgment this would materially assist in

placing the application in condition for

allowance

.

Many of the difficulties encountered in the prosecution of patent

applications after final rejection may be alleviated if each applicant includes, at the

time of filing or no later than the first reply, claims varying from the broadest to

which they believe they are entitled to the most detailed that they are willing to

accept.