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1213.01 Statement **>by Board of How an Appealed Claim May Be Amended To Overcome a Specific Rejection< [R-3] - 1200 Appeal
1213.01 Statement **>by Board of How an Appealed Claim May Be Amended To Overcome a Specific Rejection< [R-3]
**>37 CFR 41.50 Decisions and other actions by the Board.
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(c) The opinion of the Board may include an explicit statement of how a claim on appeal may be amended to overcome a specific rejection. When the opinion of the Board includes such a statement, appellant has the right to amend in conformity therewith. An amendment in conformity with such statement will overcome the specific rejection. An examiner may reject a claim so-amended, provided that the rejection constitutes a new ground of rejection.<
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If the Board's decision includes an explicit statement **>how a claim on appeal may be amended to overcome a specific rejection<, appellant may amend the claim in conformity with the statement **. 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 *>41.50(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). >A remark by the Board shall not be construed by appellant to give appellant authority to amend the claim.<
Appellant's right to amend in conformity with the statement under 37 CFR *>41.50(c)< may only be exercised within the period allowed for seeking court review under 37 CFR 1.304. See MPEP § 1216.
>An explicit statement by the Board on how a claim on appeal may be amended to overcome a specific rejection is not a statement that a claim so-amended is allowable. The examiner may reject a claim so-amended, provided that the rejection constitutes a new ground of rejection. Any new ground of rejection made by an examiner following the Board's decision must be approved by a Technology Center Director and must be prominently identified as such in the action setting forth the new ground of rejection.<
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