Appeal No. 2001-2589 Page 3
Application No. 09/072,911
to the Substitute Brief (Paper No. 19) and Reply Brief (Paper No. 21) for the appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Examiner’s Refusal To Enter Amendments
In the course of the prosecution the appellants have attempted to amend the
application by filing a substitute specification and a new drawing. Both were refused
entry by the examiner, and the appellants urge that these decisions of the examiner are
matters for review by the Board of Patent Appeals and Interferences in this appeal.
However, as the examiner has pointed out, they are not, but are matters for petition
under Rule 181. In this regard, our reviewing court long has been of the view that entry
of an amendment is a discretionary action on the part of the examiner and, if discretion
is abused, is remedied by petition to the Commissioner and not by appeal to the Board
of Patent Appeals and Interferences. See, for example, In re Mindick and Reven,
371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967). We note also that the examiner
has agreed to give favorable consideration to the entry of the substitute specification
upon resolution of this appeal (Answer, page 6).
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