What is the Board’s obligation regarding new or amended claims during an appeal?
The Board of Patent Appeals and Interferences (BPAI) has no obligation to consider new or amended claims submitted while it has jurisdiction of an appeal. This is clearly stated in MPEP 1211.02:
“There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal.”
This principle is based on the case law of In re Sweet, 136 F.2d 722, 58 USPQ 327 (CCPA 1943). However, in certain circumstances, the Board may remand the case to the examiner for consideration of specific types of amendments.
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