Appeal No. 2006-1827
Application No. 09/941,383
Instead of relying on an English translation of Japan,
the examiner relies on Koaizawa as “an English Language
[sic] equivalent to [Japan].” Answer at 5, first ¶.
However, Koaizawa is not equivalent to Japan on its face.
Some apparent differences are:
• Koaizawa claims benefit of the earlier filing
dates of two foreign applications under
35 U.S.C. 119. The two applications for which
benefit is claimed are Japanese Application
10 No. 11-149476 (the application published as Japan
2000-44269 (Japan)) and Japanese application
No. 11-334246. See Koaizawa, Foreign Application
Priority Data.
• Koaizawa includes 27 figures while Japan includes
only 11 figures. Koaizawa, Figs. 1-27; Japan
Figs. 1-11. Therefore, the breadth of disclosure
of Koaizawa is different on its face.
In addition, the examiner attributes much of the
written disclosure in Koaizawa to Japan. In the present
20 case, the written description of Japan appears to be
unknown, and therefore the reference as a whole could not
have been evaluated for what it fairly teaches. It is
axiomatic that “[a]ll of the disclosures in a reference must
be evaluated for what they fairly teach one of ordinary
skill in the art.” In re Boe, 355 F.2d 961, 965, 148 USPQ
-- 3 --
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007