C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.113

Final rejection or action

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(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's, or for ex parte reexaminations filed under § 1.510, patent owner's reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.

(b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.

(c) Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.

[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000; 69 FR 49999, Aug. 12, 2004]
Notes of Decisions
Cited in 6 cases, 1969–2019 · leading case: Lear, Inc. v. Adkins, 395 U.S. 653 (1969).
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Lear, Inc. v. Adkins, 395 U.S. 653 (1969). · cites it 2× “[7] Adkins actually amended his application a third time before he made the amendment which gained the approval of the Patent Office. This third amendment was superseded by the successful amendment, however, before the Patent Office considered it.”
Intra-Cellular Therapies, Inc v. Iancu, 938 F.3d 1371 (Fed. Cir. 2019). · cites it 2× “See 37 C.F.R. § 1.113 (a), (c); § 1.114(b) (“Prosecution in an application is closed as used in this section means .”
In Re Stephen B. Bogese II, 303 F.3d 1362 (Fed. Cir. 2002). “See 37 C.F.R. § 1.113 (a) *1368 (2001) ("On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or .”
In Re John D. Webb, Jr., Roy Y. Hori, & George E. Simpson, 916 F.2d 1553 (Fed. Cir. 1990). “” 37 C.F.R. § 1.113 (b). It follows, then, that an examiner’s final rejection, which precipitates the statutory right to appeal to the Board, 35 U.”
Exelixis, Inc. v. Kappos, 906 F. Supp. 2d 474 (E.D. Va. 2012). “37 C.F.R. § 1.113 . The applicant’s options are then limited to an “appeal in the case of rejection of any claim” or “to [an] amendment” of the application.”
Exelixis, Inc. v. Kappos, 919 F. Supp. 2d 689 (E.D. Va. 2013). “37 C.F.R. § 1.113 . The applicant then has the option to appeal the PTO’s decision as erroneous to the Board of Patent Appeals and Interferences, 1 35 U.”
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