What are the requirements for amending claims in response to a rejection?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
When amending claims in response to a rejection, an applicant must:
- Clearly point out the patentable novelty they believe the claims present in view of the state of the art disclosed by the cited references or objections made
- Show how the amendments avoid such references or objections
As stated in 37 CFR 1.111(c): In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
Additionally, the reply must comply with the requirements of 37 CFR 1.121(c) regarding the manner of making amendments to the claims.