Appeal No. 95-2783 Page 5
Application 08/026,504
dimensionless. Counsel indicated to us that this formulation
would be acceptable. Unfortunately, procedurally the only way we
can ensure entry of this amendment is to affirm the rejection
with a statement pursuant to Rule 196(c).
4. In affirming this rejection, we do not mean to indicate
satisfaction with the way prosecution was handled below. This
appeal was unnecessary, will burden the public with a later
termination date for the resulting patent, has cost Appellant and
other applicants (who subsidize most of the cost of each appeal)
a considerable sum, and has contributed to the Board's backlog.
This is not the way the system is intended to work. This result
could have been avoided if the examiner and Appellant had worked
together instead of digging into their respective positions. In
particular, the Manual of Patent Examining Procedure recommends a
practice that would have avoided this appeal:
Examiners are encouraged to suggest claim language to
applicants to improve the clarity or precision of the
language used, but should not reject claims or insist
on their own preferences if other modes of expression
selected by applicants satisfy the statutory
requirement.
MPEP § 2173.02. Once it became apparent that Appellant did not
understand the point of the rejection, the examiner should have
helped out by offering acceptable language. The fact that the
examiner was able to apply prior art against claim 1 (Paper 4
at 3) strongly suggests that the examiner understood what
Appellant meant to claim. See MPEP § 2173.06.
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