Appeal No. 2001-1596
Application 09/296,102
§ 1.109, provided in its last two sentences (emphasis added):
The applicant or patent owner may file a statement
commenting on the reasons for allowance within such time as
may be specified by the examiner. Failure to file such a
statement shall not give rise to any implication that the
applicant or patent owner agrees with or acquiesces in the
reasoning of the examiner.
Effective Dec. 1, 1997, § 1.109 was removed and its substance
incorporated into § 1.104 as § 1.104(e)(1203 O.G. 63, 79 (Oct.
21, 1997)). Subsequently, effective Nov. 7, 2000, § 1.104(e) was
amended by deleting its last sentence (underlined above), the
accompanying discussion stating that this statement in the rule
was “obsolete and out of step with recent case law” and citing as
examples of such case law four decisions of the United States
Supreme Court and Court of Appeals for the Federal Circuit2 (1238
O.G. 77, 103 (Sep. 19, 2000)).
Appellants argue that, in not filing a statement or comments
in response to the examiner’s reasons for allowance, they were
entitled to rely on the above-noted provision of the last
sentence of 37 CFR § 1.109/1.104(e), i.e., that failure to file
2 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 41 USPQ2d 1865 (1997); Markman v. Westview Instruments, 52
F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff’d, 517 U.S. 320,
38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc., 90
F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996); Zenith Labs., Inc. v.
Bristol-Myers Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir.
1996).
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