Appeal No. 2005-0499
Application No. 09/812,733
amendment filed October 22, 2002 (Paper No. 7)). Appellants have filed three
proposed amendments after the final rejection, none of which were approved for entry
by the examiner. Appellants proffered the third proposed amendment with the Reply
Brief, asserting that entry would dispose of all issues on appeal, and asking that the
Board direct the examiner to enter the amendment.
However, the Board exercises no general supervisory power over the examining
corps. Decisions within the primary examiner’s discretion, such as whether or not to
enter an amendment after final rejection, are not subject to our review. See In re
Berger, 279 F.3d 975, 984-85, 61 USPQ2d 1523, 1529 (Fed. Cir. 2002) (issue of
examiner’s refusal to enter amendment after final may be the subject of a petition, but
may not be reviewed by the Board in connection with a rejection of claims); 37 CFR
§ 1.127 (“From the refusal of the primary examiner to admit an amendment, in whole or
in part, a petition will lie to the Director under § 1.181.”).
We select claim 34 as representative in our review of the examiner’s rejection,
consistent with the rules in effect at the time of filing the Brief. See 37 CFR
§ 1.192(c)(7) (2003).
The examiner relies on the same evidence in rejecting claim 34 in the Final
Rejection and in the Answer (i.e., the Emer reference). However, the examiner shifts
position in the Answer. The examiner finds that Emer teaches a data storage unit, dirty
-4-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007