C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart D—Contested Cases

37 C.F.R. § 41.110

Filing claim information

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(a) Clean copy of claims. Within 14 days of the initiation of the proceeding, each party must file a clean copy of its involved claims and, if a biotechnology material sequence is a limitation, a clean copy of the sequence.

(b) Annotated copy of claims. Within 28 days of the initiation of the proceeding, each party must:

(1) For each involved claim having a limitation that is illustrated in a drawing or biotechnology material sequence, file an annotated copy of the claim indicating in bold face between braces ({ }) where each limitation is shown in the drawing or sequence.

(2) For each involved claim that contains a means-plus-function or step-plus-function limitation in the form permitted under 35 U.S.C. 112(f), file an annotated copy of the claim indicating in bold face between braces ({ }) the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.

(c) Any motion to add or amend a claim must include:

(1) A clean copy of the claim,

(2) A claim chart showing where the disclosure of the patent or application provides written description of the subject matter of the claim, and

(3) Where applicable, a copy of the claims annotated according to paragraph (b) of this section.

[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
Notes of Decisions
Cited in 1 case, 2016–2016 · leading case: Bamberg v. Dalvey, 815 F.3d 793 (Fed. Cir. 2016).
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Bamberg v. Dalvey, 815 F.3d 793 (Fed. Cir. 2016). · cites it 3× “The Board also denied Bamberg’s motion to amend because Bamberg failed to provide a claim chart as required by 37 C.F.R. § 41.110 (c)(2). Bamberg appeals.”
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