What constitutes an “appropriate amendment” when responding to a new ground of rejection by the Board?
An “appropriate amendment” in response to a new ground of rejection by the Board is one that addresses the specific issues raised in the new rejection. The MPEP provides guidance on what constitutes an appropriate amendment:
“An amendment is ‘appropriate’ under the rule if it amends one or more of the claims rejected, or substitutes new claims to avoid the art or reasons adduced by the Board.” (Ex parte Burrowes, 110 O.G. 599, 1904 C.D. 155 (Comm’r Pat. 1904))
Additionally, the MPEP specifies: “Such amended or new claims must be directed to the same subject matter as the appealed claims.” (Ex parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm’r Pat. 1923))
It’s important to note that: “An amendment which adds new claims without either amending the rejected claims, or substituting new claims for the rejected claims, is not appropriate.“
The appropriate amendment should aim to overcome the new ground of rejection while staying within the scope of the original claimed subject matter.
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