Appeal 2007-2399
Application 10/896,417
our opinion, a statement submitted during prosecution is not the same or
equivalent to the act of amending the application, itself. It is not a substitute
for the amending the application with a specific reference as required under
35 U.S.C. § 120.
Appellant had the opportunity to amend the Specification with the
priority claim after the Examiner, in a non-final rejection (having a mailing
date of Oct. 18, 2005), set forth a new ground of rejection over Reinert ‘362
in view of Reinert ‘201. 37 C.F.R. § 1.78 sets forth the rules for claiming
benefit of an earlier filed application, when the claim is not submitted on the
filing date of the later-filed application. However, Appellant did not amend
the Specification at this time.
Finally, Appellant argues that the claims at issue were previously
allowed by another Examiner, and relying on MPEP § 706.04, “full faith and
credit [is] to be accorded [the previous Examiner’s] determination of
allowability of claims 21-26 (Br. 20).
This argument has no merit. While great care should be given in
rejecting claims previously indicated as allowable, “[f]ull faith and credit
should be given to the search and action of a previous examiner unless there
is a clear error in the previous action or knowledge of other prior art.”
M.P.E.P. § 706.04 (Edition 8, August 2001; revised August 2006). In this
case, the present Examiner apparently determined that an error had been
made in not rejecting the claims over Reinert ‘362 in view of Reinert ‘201.
We agree with the Examiner’s determination.
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