Appeal No. 2001-1041 Page 12
Application No. 09/219,475
other decision of which we are aware,4 has specifically held this
provision of 37 CFR § 1.109/1.104(e) to be inconsistent with the
statute or otherwise invalid. To penalize the appellants for
having relied on a provision of the rules which was in effect at
the time of their reliance would be contrary to the fundamental
principles of equity and fairness on which the reissue statute is
based. Hester Industries, supra.
In effect, the examiner seems to be retroactively applying
the November 7, 2000 amendment of the rules, supra, by which this
provision was removed from 37 CFR § 1.104(e), but an agency does
not have the authority to promulgate retroactive rules unless
expressly given that authority by Congress, Motion Picture Assn.
of America Inc. v. Oman, 969 F.2d 1154, 1156, 23 USPQ2d 1447,
1449 (D.C.Cir. 1992), and the USPTO has not been given such
authority.
3(...continued)
statement exemplifies the caution and restraint with which our
courts view estoppel.
4 A lack of response was considered as a factor in the
prosecution history limiting the interpretation of the patent
claims in Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979, 52
USPQ2d 1109, 1113-14 (Fed. Cir. 1999).
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