Appeal No. 1999-2143
Application No. 08/734,866
language abstracts for these Japanese applications.4 See, e.g., the
examiner’s citation of the “abstract” of JP ‘188 on page 3 of the
answer. In this regard, it appears that neither the appellants nor
the examiner made any effort to obtain and fully consider complete
English language translations of the references, as would be expected
in any appeal in which the relied upon references are not in the
English language. Despite the lack of such effort, the answer refers
to JP ‘188 and JP ‘005 as the evidence relied upon to reject the
claims on appeal. This is not appropriate. Similarly, we find that
the appellants’ sweeping characterizations of JP ‘188 and JP ‘005 are
not accompanied by any indication that the complete references were
considered and evaluated.
Given that the examiner’s consideration of the prior art
appears to have been limited to the English language abstracts, the
answer should have referred to the published abstracts rather than
the underlying Japanese patent documents.5 Also, the answer should
4 These abstracts are: (1) Patent Abstracts of Japan, The
Patent Office, Japanese Government, Vol. 16, No. 31, Jan. 27, 1992,
for JP ‘188 and (2) Patent Abstracts of Japan, The Patent Office,
Japanese Government, Vol. 555, Nov. 25, 1992 for JP ‘005.
5 See In re Portola Packaging, 110 F.3d 786, 790, 42 USPQ2d
1295, 1299 (Fed. Cir. 1997).
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007