37 C.F.R. § 1.116

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

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(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]

Notes of Decisions

Cited in 36 cases (3 in the last 5 years), 1975–2026 · leading case: Genzyme Corporation and Mount Sinai School of Medicine of New York University v. Transkaryotic Therapies, Inc.

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Genzyme Corporation and Mount Sinai School of Medicine of New York University v. Transkaryotic Therapies, Inc. (2003) cafc · cites it 6× “” Without further recourse, the applicant submitted an amendment after final rejection under 37 C.F.R. § 1.116 . This amendment to clarify the points of disagreement with the examiner also included a declaration by Dr.”

Ntp, Inc. v. Research in Motion, Ltd. (2005) cafc “See Amendment Pursuant to 37 C.F.R. § 1.116 , at 19-20 (Nov. 7,1994).”

Hyatt v. Kappos (2010) cafc · cites it 2× “” 37 C.F.R. § 1.116 (e). HYATT v. KAPPOS 4 ceed under the established administrative law substantial evidence standard.”

Intra-Cellular Therapies, Inc v. Iancu (2019) cafc · cites it 3× “IANCU 7 A third option is to file a 37 C.F.R. § 1.116 amendment. § 1.113(a). Under § 1.”

Waldemar Link, Gmbh & Co. v. Osteonics Corporation (1994) cafc · cites it 2× “The After Final Advisory Action set forth at least four grounds for not entering the amendments: (1) the applicant did not show under 37 C.F.R. § 1.116 (b) (1993) good and sufficient reasons for the amendments, (2) the applicant “raise[d] the issue of new matter” requiring a new…”

Avocent Huntsville Corp. v. Clearcube Technology, Inc. (2006) alnd · cites it 5× “Clodfelter’s first (March Ip, 1999) amendment in response to the PTO’s Office Action Summary rejecting pending claim 20 Meanwhile, Mark Clodfelter filed an amendment under 37 C.F.R. § 1.116 , in direct response to the Office Action Summary denying the patentability of claim 20…”

In Re: Durance (2018) cafc “Following the Final Office Action, Durance filed an amendment after final rejection pursuant to 37 C.F.R. § 1.116 and a request for further consideration.”

Transco Products Inc. v. Performance Contracting, Inc. And Performance Contracting Group, Inc. (1994) cafc “Indeed, in this case, Pinsky filed his continuation application merely for the purpose of having the examiner consider an amendment to the claims proposed after final rejection in the parent application, but which was not entered in the parent application on the basis that it…”

In Re Howard Sernaker (1983) cafc “While appellant presented the DeVries affidavit to the examiner after his final action, 37 C.F.R. § 1.116 (b) (1982) would allow the examiner to admit this evidence upon a showing of good cause.”

Arendi S.A.R.L. v. Google LLC (2018) cafc “Amendment Under 37 C.F.R. § 1.116 at 1-2 (Dec. 18, 2000) (J.”

In Re Francis J.A.M.C. De Blauwe and Frank K.A. Selleslags (1984) cafc “Affidavits or declarations filed after final rejection will be considered if a satisfactory showing under 37 C.F.R. § 1.116 (b) or 37 C.F.R. § 1.195 is made.”

Refac International, Ltd. And Forward Reference Systems, Ltd. v. Lotus Development Corporation (1996) cafc “” See 37 C.F.R. § 1.116 (1995) (“Amendments after final action.”

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— 37 C.F.R. § 1.116(b) — 1 case

Genzyme Corporation and Mount Sinai School of Medicine of New York University v. Transkaryotic Therapies, Inc. (2003) cafc “” Without further recourse, the applicant submitted an amendment after final rejection under 37 C.F.R. § 1.116 . This amendment to clarify the points of disagreement with the examiner also included a declaration by Dr.”

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