Appeal No. 1997-1793
Application No. 08/528,044
“Contents” of the file wrapper of the present application to 4
clearly indicate that the appellants have submitted such an
accurate English language translation. Thus, in the absence
of an accurate English language translation of the priority
document, it appears that JP ‘825 would qualify as prior art
under 35 U.S.C. § 102(a).
If the examiner determines that JP ‘825 qualifies as
prior art, the examiner should obtain a complete English
language translation to fully evaluate the teachings of the
reference as a whole. In reviewing the Derwent abstract of JP
‘825 (i.e., Ishihara), we find that the reference teaches a
sunscreen composition containing a mixed oxide in which 1-15
wt.% of iron oxide is precipitated onto hydrated titanium
oxide and then heat treated at 600EC. The examiner should
consider the complete translation of JP ‘825 to determine
whether the product of JP ‘825 is indistinguishable from the
product as recited in appealed claim 10 and whether it would
be appropriate to shift the burden of proof to the appellants
to show that the prior art product would not necessarily or
inherently possess the characteristics as recited in the
claim. If claim 10 is to be rejected over JP ‘825 on this
4We note that the “Contents” of the file wrapper of the
parent application is missing, even though the present
application is a file wrapper continuation application.
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