Appeal No. 2006-1827
Application No. 09/941,383
For other claims, the examiner further relies upon the
text of Koaizawa as equivalent to Japan for other claim
elements. Answer at 8. “We do not think a rejection under
35 U.S.C. 103 should be based on such speculations and
assumptions.” In re Steele, 305 F.2d 859. 862-63, 134 USPQ
292, 295 (CCPA 1962). If the examiner wishes to rely upon
Japan as the primary reference over which the claims are
rejected, a certified human translation of Japan must be
submitted so that its disclosure is directly relied upon. A
10 computer-assisted translation generally has too many
ambiguities. It is regularly unsatisfactory. The
translation must be accompanied by an affidavit attesting to
the accuracy of the translation.
The examiner’s reliance on Japan greatly affects the
prosecution of this case. Japan qualifies as prior art
under 35 U.S.C. § 102(b), because it was published in Japan
more than one year before appellant’s filing date of
Aug. 28, 2001. Since the examiner relies upon Japan, which
may bar patentability to appellant’s claims under § 102(b),
20 the applicants in this case were unable to consider the
possibility of antedating the reference in accordance with
Rule 131. 37 C.F.R. § 1.131(a)(2)(2004). On the other
hand, Koaizawa is prior art under 35 U.S.C. § 102(e),
because it is a U.S. patent that was filed before
appellant’s filing date (Apr. 7, 2000) but issued
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