Appeal No. 2001-2138
Application No. 08/403,276
foreign language, without a certified translation, would have no weight. We do not
encourage pro forma objections: in some cases, the examiner and Applicants may be
able to advance prosecution of a case without a translation. To the extent that the
patentability of claims depends on a foreign language reference, however, the record will
be incomplete and inadequate until a translation has been entered. In no case should an
appeal reach the board without a translation of any foreign language reference relied on by
either the examiner or the Applicant.
In this case, unusual circumstances, described in the next section, permit an
immediate resolution of this appeal.
The prima facie case of obviousness
In the following discussion, we shall refer only to RUS1, as the examiner and
Appellants appear to treat them cumulatively, and because Bertin, a patent in the same
“family” that claims priority, in part, on RUS1, provides some guidance. We feel this is a
reasonable way to proceed because the examiner and Appellants do not appear to have
disputed their characterizations of the references. Only the inferences and conclusions
each draws from the references are in dispute.
The burden is on the examiner to establish a prima facie case of obviousness of
the claimed subject matter over prior art references. In re Deuel, 51 F.3d 1552, 1557, 34
USPQ2d 1210, 1214 (Fed. Cir. 1995). Only after that burden is met must the applicant
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