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1213.01 Statement of Allowability by Board - 1200 Appeal
1213.01 Statement of Allowability by Board
37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.
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(c) Should the decision of the Board of Patent Appeals and Interferences include an explicit statement that a claim may be allowed in amended form, appellant shall have the right to amend in conformity with such statement, which shall be binding on the examiner in the absence of new references or grounds of rejection.
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If the Board's decision includes an explicit statement that a claim may be allowed in amended form, appellant may amend the claim in conformity with the statement and the statement would be binding on the examiner in the absence of new prior art references or grounds of rejection. The examiner should make certain that the amendment does in fact conform to the statement in the Board's decision.
The making of a statement under 37 CFR 1.196(c) is discretionary with the Board. In the absence of an express statement, a remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat. 1913).
Appellant's right to amend in conformity with the statement under 37 CFR 1.196(c) may only be exercised within the period allowed for seeking court review under 37 CFR 1.304. See MPEP § 1216.
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