Appeal No. 2003-1608 Page 4
Application No. 08/425,716
submitted clearly is necessary to supplement the record, … because in its
absence, the record is the same as that in the prior appeal.”
Accordingly, appellants now request the Board to “order the entry of the
previously filed response into the record.” Reply Brief, page 9. The Board,
however, does not have the authority to grant this request. MPEP § 715.08. We
note that a similar situation occurred in In re Berger, 279 F.3d 975, 984-85, 61
USPQ2d 1523, 1529 (Fed. Cir. 2002). In this case, appellant argued that the
examiner abused his discretion by refusing to enter the amendments Berger
submitted after final rejection of the claims. The court found,
this issue may be the subject of a petition to the
Commissioner, but may not be reviewed by the Board in
connection with a rejection of claims. …
The refusal of an examiner to enter an amendment after
final rejection of claims is a matter of discretion. If there is an
abuse of discretion, the matter may be remedied by a Rule
181 petition to the Commissioner of Patents. Ultimate
judicial review of such matters of practice and procedure
may be had in District Court. This court, like the Board of
Appeals, does not consider the issue of whether the
examiner's refusal to enter the proposed amendment after
final rejection constituted an abuse of discretion on his part.
In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA
1967).
These views were further confirmed in In re Hengehold:
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.
440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971).
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