What is the impact of amendments under 37 CFR 1.116 or 41.33 on new grounds of rejection?

Amendments submitted under 37 CFR 1.116 or 41.33 can affect whether a rejection in an examiner’s answer is considered a new ground of rejection. According to MPEP 1207.03(a):

If:

• An amendment under 37 CFR 1.116 or 41.33 proposes to add or amend one or more claims;
• The applicant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and
• The advisory action indicates which individual rejection(s) set forth in the action from which appeal has been taken would be used to reject the added or amended claims,

Then:

1. The appeal brief must address the rejection(s) of the added or amended claim(s), and
2. The examiner’s answer may include the rejection(s) of the added or amended claims, and such rejection(s) would not be considered as a new ground of rejection.

It’s important to note that this does not change the existing practice with respect to amendment after final rejection practice (37 CFR 1.116). The provisions of 37 CFR 1.116 or 41.33 still control whether an amendment is entitled to entry.

This approach allows for the consideration of amendments made after final rejection while ensuring that applicants have fair notice of the rejections they need to address in their appeal brief.

To learn more:

• amendments
• 37 CFR 1.116
• 37 CFR 41.33
• new ground of rejection
• MPEP 1207.03(a)