Appeal No. 2001-1041 Page 10
Application No. 09/219,475
Effective Dec. 1, 1997, 37 CFR § 1.109 was removed and its
substance incorporated into 37 CFR § 1.104 as § 1.104(e)(1203
O.G. 63, 79 (Oct. 21, 1997)). Subsequently, effective Nov. 7,
2000, 37 CFR § 1.104(e) was amended by deleting its last sentence
(underlined above), the accompanying discussion stated that this
statement in the rule was inconsistent with recent decisions by
the United States Supreme Court and the Court of Appeals for the
Federal Circuit2 which decisions highlight the crucial role the
procecution history plays in determining the validity and scope
of a patent (1238 O.G. 77, 103 (Sep. 19, 2000)).
Appellants argue that, in not filing a statement or comments
in response to the examiner's reasons for allowance, they were
entitled to rely on the above-noted provision of the last sentence
of 37 CFR § 1.109/1.104(e), i.e., that failure to file such a
statement would not give rise to any implication that they agreed
with or acquiesced in the examiner's reasoning. We agree. It has
2 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 41 USPQ2d 1865 (1997); Markman v. Westview Instruments, 52
F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 517 U.S. 320,
38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc., 90
F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996); Zenith Labs., Inc. v.
Bristol-Myers Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir.
1996).
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