Examiners have multiple sources of authority that they must follow - they are bound not only by case law from the Federal Circuit (and Supreme Court), but also by regulations and guidelines through statute and the Administrative Procedure Act. But alas, sometimes examiners get confused as to which rules they must follow, may follow, and which rules trump other rules.

USPTO examiners seems especially confused as of late in that a common argument coming back from examiners is:

Applicant has cited case law from the Federal Circuit that is not in the MPEP. The Examiner is not required to follow case law that is not in the MPEP.

Specifically, some examiners are completely ignoring arguments under the dubious theory that they are not required to follow precedential opinions of the Federal Circuit because “they are not in the MPEP.”

These examiners do not seem to realize the one-way nature of the MPEP (it binds the Office, not the applicant (see David Boundy’s nice summary here, footnote 15, for example), and further is not actual law itself. The MPEP notes in its forward that it:

is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications and other proceedings before the USPTO. For example, the Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations…

Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO.

Thus, the MPEP makes clear that examiners are governed by … decision. So, the next time an examiner attempts to ignore your arguments based on binding Federal Circuit precedential case law because it is not in the MPEP, it might be helpful to point them to the MPEP itself.