Appeal No. 97-2893
Application No. 29/038,948
of claims in a particular application, the PTO and its examiners
are not bound to repeat that error in subsequent applications.
Accord, In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845,
1849 (Fed. Cir. 1994) ("The fact that the PTO may have failed to
adhere to a statutory mandate over an extended period of time
does not justify its continuing to do so."); In re Cooper, 254
F.2d 611, 617, 117 USPQ 396, 401 (CCPA), cert. denied, 358 U.S.
840, 119 USPQ 501 (1958) (decision in a trademark application in
accordance with law is not governed by possibly erroneous past
decisions of the Patent Office); In re Zahn, 617 F.2d 261, 267,
204 USPQ 988, 995 (CCPA 1980) ("[W]e are not saying the issuance
of one patent is a precedent of much moment."); Ex parte Tayama,
24 USPQ2d 1614, 1618 (Bd. Pat. App. & Int. 1992) (prior issuance
of patents for designs referred to as icons has no significant
precedential value in evaluating compliance with 35 U.S.C. §
171). Compliance with §§ 112 and 171 requires analysis of the
statutes and interpretation of case law. Mere reference to
possibly contrary decisions of an examiner in other
applications, applications in which the issue raised in this
case was not even addressed, are not helpful in this analysis.
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