Ex parte GENATOSSIO - Page 25




          Appeal No. 98-2069                                                          
          Application No. 29/052,369                                                  


          have issued with the word "substantially" appearing in the                  
          claim.  However, the appellant has not cited any authority                  
          which holds that the issuance of a patent has any significant               
          precedential value.  In evaluating compliance with 35 U.S.C.                
          §§ 112 and 171, each design application must be evaluated on                
          the record developed in the Patent and Trademark Office (PTO).              
          See In re Gyurik, 596 F. 2d 1012, 1018 n.15, 201 USPQ 552, 558              
          n.15 (CCPA 1979) and In re Phillips, 315 F. 2d 943, 137 USPQ                
          369 (CCPA 1963).  To the extent any error has been made in the              
          rejection or issuance 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,  16 F.3d              
          1189, 1193, 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              
                                          25                                          





Page:  Previous  18  19  20  21  22  23  24  25  26  27  28  29  30  31  32  Next 

Last modified: November 3, 2007