Appeal No. 2002-2283
Application No. 08/882,513
MPEP 1207 states that “[t]o expedite resolution of
cases under final rejection, an amendment filed at any
time after final rejection, but before jurisdiction has
passed to the Board . . . may be entered upon or after
filing of an appeal brief provided that the amendment
conforms to the requirements of 37 CFR 1.116.” For the
foregoing reasons, Applicants submit that the amendment
to Claim 32 presented after the final Office Action does
meet the requirements of 37 CFR 1.116 and thus should
be entered and considered in this appeal.
The relief appellants request is outside of our jurisdiction
to grant. 35 U.S.C. § 134(a)(appeal from the rejection of claims).
The examiner’s decision not to enter the amendment to Claim 32
after final rejection is a petitionable matter, not a matter
appealable under 35 U.S.C. § 134. 37 CFR § 1.181(a)(1). As
In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971),
instructs at 1403, 169 USPQ at 479 (footnote omitted):
There are a host of various kinds of decisions an examiner
makes in the examination proceeding - mostly matters of a
discretionary, procedural or nonsubstantive nature - which
have not been and are not now appealable to the board or
to this court when they are not directly connected with
the merits of issues involving rejections of claims,
but traditionally have been settled by petition to the
Commissioner.
Discussion
Before we consider the question of obviousness under 35 U.S.C.
§ 103, we must first determine the metes and bounds of the subject
matter claimed. Representative Claims 1, 5, 20 and 26 are
reproduced below:
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