Appeal No. 2001-1241 Page 9
Application No. 09/101,234
App. Int. 2001) (“Citation of an abstract without citation and reliance on the
underlying scientific document itself is generally inappropriate where both the
abstract and the underlying document are prior art. . . . It is our opinion that a
proper examination under 37 CFR § 1.104 should be based on the underlying
documents and translations, where needed.”).
As far as this application is concerned, we note that the examiner in the
Answer cited several pages of the German-language portion of Schade as
disclosing facts relevant to the patentability of the instant claims. At one point,
the examiner implies that Schade’s working examples anticipate the claims,
although no rejection under 35 U.S.C. § 102 was made. See the Examiner’s
Answer, page 4 (“Schade et al[.] teaches the preparation of these polymers with
different viscosities (see polymers 1-12 on pages 10-13), including the claimed
percentages of monomers, cross linkers, oil soluble components etc.”). As noted
above, we have not considered the German-language portion of Schade
because we cannot read it. The examiner should obtain a translation or English-
language equivalent of Schade in order to fully evaluate its relevance to the
instant claims. Even if the examiner is fluent in technical German, and can
understand the parts of Schade that are cited in the Examiner’s Answer, a
translation would allow the rest of us who are charged with reviewing the
rejection to also understand the reference.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007