Appeal No. 97-0032
Application No. 08/095,295
definition provided in the appellants' specification for an
equivalent.
The MPEP further provides in section 2184 that
If the applicant disagrees with the inference of equivalence
drawn from a prior art reference, the applicant may provide
reasons why the applicant believes the prior art element
should not be considered an equivalent to the specific
structure, material or acts disclosed in the specification.
The appellants have never provided any reasons why they
believe the prior art element should not be considered an
equivalent to the specific structure, material or acts disclosed
in the specification. Thus, in my view, the appellants have16
apparently acquiesced to the examiner's inference of equivalence
drawn from Warren by their continuing failure to argue this
matter.
I believe that permitting the examiner who is knowledgeable
in the art to make the initial determination of equivalency and
permitting an applicant the opportunity to challenge such a
determination and then appeal from the examiner's rejection of
16See page 9 of the appellants' response (Paper No. 5,
filed November 30, 1994) to the first office action and page 17
of the appellants' brief.
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