Appeal No. 2007-0168
Application No. 10/127,927
Yet, the Examiner has not identified the rejection as a new ground of
rejection in the Answer and given the Appellants an opportunity to address
this new prior art reference. See 37 C.F.R. § 41.39(a)(2); MPEP § 1207.03
(8th ed., Rev. 5, August 2006).
Second, the Examiner’s use of the word “with” in the Answer makes
it unclear what exactly the rejection discussed above constitutes. That is, it
is not clear whether U.S. ‘935 is relied upon by the Examiner as an
additional reference or as an English translation of DE ‘671. We point out
that in either event, U.S. ‘935 is a new, separate document.
Furthermore, in the Final Rejection and Answer, the Examiner treats
the German and Japanese prior art references as though they might be
equivalent:
[DE ‘671] ([JP ’689]; abstract (57 melting temperature)) . . . .
Final Rejection 4. However, in their Brief, the Appellants treat the two
patents as separate references when addressing the Examiner’s rejection.
See Br. 22. Moreover, while the statement of rejection discussed above
appears to refer only to the abstract of the JP ‘689 patent as a substitute for
DE ‘671, the Examiner cites information from the Abstract of DE ‘671 in
the table in the Answer, to the exclusion of JP’689 (Answer 8). The
Examiner also does this in the body of the Answer:
However, [DE ‘671] (abstract), [JP ‘376] (abstract) . . . disclose(s) the
Pb-free Sn-Ag-Cu solder alloy contains Ni in the analogous
metallurgical art.
Answer 7.
II. The machine translations of the foreign prior art relied upon by the
Examiner are insufficiently clear and require accurate translation.
The computer translation of the foreign prior art relied upon by the
Examiner makes it difficult to ascertain the precise teachings therein. The
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