1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal
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(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title.
(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2) To rewrite dependent claims into independent form.
(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
(d)
(1) An affidavit or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other Evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other Evidence is necessary and was not earlier presented has been made.
(2) All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
I. AMENDMENTS
Amendments must be submitted in a separate paper
- they are not a matter of right
Amendments filed after the filing of a Notice of Appeal, but prior to the date of filing a brief, may only be admitted to:
- cancel claims
- comply with any requirement of form expressly set forth in a previous action
- present rejected claims in better form for consideration on appeal
- amend the specification or claims upon a showing of good and sufficient reasons as to why the amendment is necessary and was not earlier presented
Amendments filed on or after the filing of an appeal brief may only be admitted to:
- cancel claims (where such cancellation does not affect the scope of any other pending claim in the proceeding)
- rewrite dependent claims into independent form
A brief shall not include any non-admitted amendments and that an amendment, affidavit, or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded for that purpose.
Any amendment, affidavit or other evidence filed after the mailing date of a final Office action and on or before the date of the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.116, whereas any amendment, affidavit or other evidence filed after the mailing date of a non-final Office action and on or before the date of notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111.
II. AFFIDAVITS OR OTHER EVIDENCE
Affidavits or other evidence submitted after the filing of a Notice of Appeal, but prior to an appeal brief, may be admitted if the examiner determines that:
- the affidavit or other evidence overcomes all rejections under appeal, and
- a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made
