Can Board remarks about claim features be interpreted as allowance guidance?
No, remarks by the Patent Trial and Appeal Board about claim features should not be interpreted as guidance for allowance. MPEP 1213 clearly states:
A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913). A remark by the Board shall not be construed by appellant to give appellant authority to amend the claim.
Key points to remember:
- Board remarks about missing features in claims are not suggestions for allowance
- Appellants should not assume they have authority to amend claims based on Board remarks
- The Board’s role is to decide on the appeal, not to provide prosecution guidance
- Any amendments or further prosecution should follow proper USPTO procedures
It’s important for appellants and patent practitioners to understand the limited scope of Board remarks and not misinterpret them as implicit allowance guidance.
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