Appeal No. 2002-1668 Page 11
Application No. 09/531,666
file such a statement shall not give rise to any implication that the applicant or
patent owner agrees with or acquiesces in the reasoning of the examiner.
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 prosecution history plays in determining the validity and
scope of a patent (1238 O.G. 77, 103 (Sep. 19, 2000)).
The appellant argues that, in not filing a statement or comments in response to
the examiner's reasons for allowance, he was entitled to rely on the above-noted
provision of the last sentence of 37 CFR § 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 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). 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
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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