Appeal No. 96-1313
Application 08/202,536
they have to ask the majority why claims 11-18 and 25-27 are
unpatentable? Again, it is the PTO’s responsibility to
provide reasons in support of any rejection made.
Now considering the first option, what amendment or
showing of facts would be sufficient to overcome the
majority’s new rejection of claims 11-18 and 25-27? On this
record, appellants have to guess why these claims are
unpatentable. As a consequence, they may needlessly amend the
claims and give up potentially valuable subject matter to
which they would otherwise be entitled.
These are not frivolous issues. The amendment of patent
claims during prosecution for the purposes of establishing
patentability has real world consequences if the application
issues into a patent. If such a patent is involved in an
enforcement action, one of the factors to be considered by a
court in construing the patent’s claims is the prosecution
history of the patent before the PTO, including any amendments
made to the claims and the reasons why such amendments were
made. Thus, prior to amending the claims and possibly giving
up protection to which they might have been entitled, an
applicant should be informed why the PTO has determined the
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