Appeal No. 2003-1608 Page 3
Application No. 08/425,716
disclosure to support or enable the claimed invention; and on the grounds of res
judicata.
On October 1, 2001, appellants filed a response to this final Office Action,
accompanied by a declaration under 37 CFR § 1.132.
On October 15, 2001, the examiner issued an Advisory Action stating,
inter alia, “… an ‘opinion’ declaration, does not obviate the prior Board decision.”
Paper No. 54, page 1. We note that the examiner did not check either box 6(a)
(“the affidavit … has been considered”), or box 7 (“the affidavit … will not be
considered”) of the Advisory Action. Id. While the examiner’s treatment of the
declaration in the Advisory Action may have been ambiguous, the Answer (page
2) clearly states, appellants’ “[d]eclaration was not entered because it constitutes
new evidence submitted after-final. … 37 CFR § 1.116 and 37 CFR § 1.195.”
At this time, instead of seeking administrative relief under 37 CFR
§ 1.181, appellants filed a Reply Brief. However, as set forth in MPEP § 715.08,
“[r]eview of an examiner’s refusal to enter an affidavit as untimely is by petition
and not by appeal to the Board of Patent Appeals and Interferences. In re
Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ
209 (Bd. App. 1941).”
DISCUSSION
There can be no doubt that by denying entry of appellants’ declaration,
the record now before this Merits Panel is exactly the same as the record in
Appeal No. 1999-1361. See e.g., Reply Brief, page 5, “[t]he declaration
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