Appeal No. 2006-2378 Page 4
Application No. 10/433,388
2. Obviousness
The examiner rejected claims 1-11 under 35 U.S.C. § 103 as obvious in view of
WO 00/29372 (“WO ‘372”),1 Japanese Patent Document 10-251211 (“JP ‘211”)2 and
Nordal.3
As an initial matter, we note that a translation of the JP ‘211 document was not
made of record until after the Appeal Brief was filed.4 MPEP § 706.02 addresses the
use of non-English language documents in rejections, stating in relevant part (emphasis
added) that “[i]f the document is in a language other than English and the examiner
seeks to rely on that document, a translation must be obtained so that the record is
clear as to the precise facts the examiner is relying upon in support of the rejection.”
The examiner’s delay in obtaining a translation of JP ‘211 directly contravenes
MPEP § 706.02. Moreover, because of the late entry of the translation into the record,
Appellants did not have an opportunity to evaluate the translation before filing this
appeal. However, in view of the decision herein, we do not consider the failure to timely
present the translation prejudicial to Appellants.
In rejecting the claims as being obvious over the cited references, the examiner
acknowledged that “the difference between [WO ‘372] and herein claimed process is the
order of the reaction. In the claimed process [the] nitro group is first reduced to amino
and then amidated as against, in the reference, amidation takes [place] first followed by
the reduction of nitro to the amino group.” Answer, page 3. The examiner concluded
1 Parady et al., WO 00/29372, published May 25, 2000.
2 Suzuki et al., JP 10-251211, published September 22, 1998.
3 Nordal et al., U.S. Patent 4,250,113, issued February 10, 1981.
4 The machine translation of JP ‘211 has a document date of April 6, 2006, but is incorrectly indexed in
the electronic file as “Examiner’s search strategy and results.” The Appeal Brief filing date is January 30,
2006.
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