Appeal No. 2002-1668 Page 12
Application No. 09/531,666
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 other decision of which
we are aware,4 has specifically held this provision of 37 CFR § 1.104(e) to be
inconsistent with the statute or otherwise invalid. To penalize the appellant 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.
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
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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