Appeal No. 2000-2202 Page 2
Application No. 08/810,049
OPINION
The Examiner relied on an Italian patent 590,156, identified as Avery Adhesive,
published on March 25, 1959 as evidence of obviousness. The Examiner states “Avery
Adhesive shows the construction of individual double sided adhesive tapes, 11, on a
continuous backing release layer, 20, with individual release sheets, 10, overlying the
individual tapes (See Figs. 1, 3).” (Answer, p. 4). The Examiner has not referred to the
text of the reference used to reach these determinations. It appears the Examiner has not
considered an English language translation of this document.2 A translation of this
document has now been obtained by the Board. The Examiner is required to consider the
translation of Italian patent 590,156 to determine if more or all of the limitations of the
claims on appeal are disclosed therein.
The Board of Patent Appeals and Interferences is a board of review and not a
vehicle for initial examination. See 35 U.S.C. § 6(b)(2000). The burden is on the
Examiner to set forth a prima facie case of obviousness. See In re Alton, 76 F.3d 1168,
1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). Findings of fact and conclusions of law
2 We note that the Examiner should have obtained a complete translation of the reference during
prosecution, and not relied solely on the figures. It is now mandatory for such a translation to be
provided prior to forwarding the appeal to the Board. See, e.g. the April 29, 2002 memo from Deputy
Commissioner Kunin.
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