Appeal No. 2003-1608 Page 5
Application No. 08/425,716
Regulations promulgated by the PTO are consistent with these
views:
From the refusal of the primary examiner to admit an
amendment, in whole or in part, a petition will lie to the
Commissioner under §1.181.
37 C.F.R. §1.127 (2000).
The discretionary decision of the examiner to refuse to enter
Berger's amendments submitted after final rejection is not
reviewable by this court in this proceeding.
As the examiner explains (Answer, page 2), entry of “‘new evidence in an
application on appeal is not a matter of right’ especially when no ‘good and
sufficient reasons why they are necessary and were not earlier presented’ have
been made by [a]ppellant[s], in accordance with 37 CFR § 116 or 37 CFR
§ 195.” See In re De Blauwe, 736 F.2d 699, 705 n.9, 222 USPQ 191, 197, n. 9
(Fed. Cir. 1984). As MPEP § 1002.02(c)(3) makes clear,
Petitions invoking the supervisory authority of the Commissioner
under 37 CFR [§] 1.181 involving any ex parte action or
requirement in a patent application by the examiner which is not
subject to appeal (37 CFR 1.191) and not otherwise provided for,
as for example: … (e) relative to formal sufficiency and propriety of
affidavits under 37 CFR [§] … 1.132 (MPEP § 716)….
Accordingly, the discretionary decision of the examiner to refuse to enter
appellants’ declaration is a petitionable matter and is not susceptible to review by
the Board.
As the record stands before us on appeal, appellants’ declaration has not
been entered. Therefore, as appellants recognize (Reply Brief, page 5), the
record before us is the same as that in the prior appeal. Accordingly, we are
compelled to reaffirm the rejection of claims 26, 31, 35, 36 and 43 under 35
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