Appeal No. 1997-2387
Application No. 08/082,373
The references relied on by the examiner are:
Bernoco et al. (Bernoco) 4,148,607 Apr. 10, 1979
Forrest 4,438,068 Mar. 20, 1984
Chagnon et al. (Chagnon) 4,628.037 Dec. 9, 1986
Sakuma 4,770,855 Sep. 13, 1988
Japanese Patent Applications
3
Japan Kokai (JP '161) 59-1951161 Nov. 6, 1984
4
Japan (Takahashi abstract) 4-369477A Dec. 22, 1992
An additional reference relied on by appellants (brief, p. 13) is:
Eur. Patent Application 030 087 Jun. 10, 1981
3We refer to the English language translation prepared by the United States Patent and Trademark
Office in April 1991 and supplied to appellants with the examiner's supplemental answer.
4At page 3 of the answer, the examiner lists "3-173093 TAKAHASHI (Japan) 12-1992" as the "prior
art of record relied upon in the rejection of the claims under appeal." While, it appears that the examiner is
relying on the actual Japanese document, we cannot find an English language translation of this document
in this record. Rather, what we find is an English abstract. Thus, it appears that the examiner and
appellants have been relying upon the English abstract. Consequently, our decision is also based on a
consideration of the English abstract.
Upon return of the application, the examiner should clarify the record as to what evidence of
obviousness is relied upon in support of the prior art rejections of record. Furthermore, when relying on non-
English documents as evidence of obviousness, a full translation should always be used when readily
available. See In re Meinhardt, 392 F.2d 273, 280, 157 USPQ 270, 275 (CCPA 1968) ("...it is proper for the
court and necessarily, the board, to consider everything that a reference discloses.").
Finally, the examiner stated "that since claim 7 now recites a flat bottomed well, which was not
disclosed in the parent application or the translated priority documents, it receives ... [a] June 28, 1993
[filing date]" (answer, p. 8, para. 1). Thus, the Takahashi abstract qualifies as prior art against claim 7.
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