Appeal No. 2001-1596
Application 09/296,102
such a statement would not give rise to any implication that they
agreed with or acquiesced in the examiner’s reasoning. We agree.
It has been held that an applicant should be entitled to rely on
the statutes, Rules of Practice and provisions of the MPEP in the
prosecution of his patent application. In re Kaghan, 387 F.2d
398, 401, 156 USPQ 130, 132 (CCPA 1967). The examiner here
appears to be of the opinion that the 37 CFR § 1.109/1.104(e)
provision negating any implication of acquiescence from
applicant’s failure to respond to the examiner’s reasons for
allowance was in some manner invalid because contrary to case
law. However, it is well settled that the rules of the PTO have
the force and effect of law unless they are inconsistent with
statutory provisions, In re Rubinfield, 270 F.2d 391, 395, 123
USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960), and
neither any of the cases cited in footnote 2, supra, nor any
other decision of which we are aware, has specifically held this
provision of 37 CFR § 1.109/1.104(e) to be inconsistent with the
statute or otherwise invalid. To penalize appellants for having
relied on a provision of the rules which was in effect at the
time of their reliance would be contrary to the fundamental
principles of equity and fairness on which the reissue statute is
based. Hester Industries, supra.
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