Appeal No. 2001-1041 Page 11
Application No. 09/219,475
been held that an applicant should be entitled to rely on the
statutes, Rules of Practice and provisions of the MPEP in the
prosecution of his/her patent application. In re Kaghan, 387 F.2d
398, 401, 156 USPQ 130, 132 (CCPA 1967). The examiner here
appears to be of the opinion that the 37 CFR § 1.109/1.104(e)
provision negating any implication of acquiescence from the
applicant's failure to respond to the examiner's reasons for
allowance was in some manner invalid because it was contrary to
case law. However, it is well settled that the rules of the USPTO
have the force and effect of law unless they are inconsistent with
statutory provisions, In re Rubinfield, 270 F.2d 391, 395, 123
USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960), and
neither any of the cases cited in footnote 2, supra,3 nor any
3 The first three cases cited in footnote 2, supra, do not
even deal with an examiner's reasons for allowance. As to the
fourth case cited in footnote 2, supra, while it supports the
proposition that an examiner's reasons for allowance is part of
the prosecution history, it does not, in our view, support the
proposition that an examiner's reasons for allowance in a first
action allowance of the originally filed claims as in the
application before us for review can alone give rise to
prosecution history estoppel. From a historical perspective, the
Supreme Court stated that "[o]ur prior cases have consistently
applied prosecution history estoppel only where claims have been
amended for a limited set of reasons, and we see no substantial
cause for requiring a more rigid rule invoking an estoppel
regardless of the reasons for a change." Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. at 32, 41 USPQ2d at 1872. This
(continued...)
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007