Ex Parte Hirano

Board of Patent Appeals and Interferences

Aug 27, 2008

10495434 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FUJIO HIRANO
____________

Appeal 2008-1515
Application 10/495,434
Technology Center 1700
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Decided: August 27, 2008
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This appeal was taken pursuant to 35 U.S.C. § 134 from the final
rejection of claims 1-12.
Our review of the application leads us to conclude that this appeal is
not in condition for a decision at this time. Therefore, we remand the
Appeal 2008-1515
Application 10/495,434

application to the Examiner to consider the following issues and to take
appropriate action.

On May 19, 2008, an Information Disclosure Statement (IDS) was
filed in the present application. It is apparent from the record that the
Examiner has not yet considered the submitted IDS. The IDS should be
evaluated by the Examiner for compliance with 37 C.F.R. §§ 1.97 and 1.98
and, if appropriate, considered. A communication notifying the Applicant of
the Examiner's decision should be prepared and mailed. It is appropriate
that the necessary consideration and processing of the IDS occur prior to a
rendering of a decision in this appeal.
The Examiner maintains the § 102(b) rejections from the Final
Rejection of claims 1, 4-6, 8-10, and 12 as anticipated by TATSUO et al.
(Japanese Patent Publication No. 09-086188) and claims 1, 2, 4-7, and 9-12
as anticipated by TATSUTO et al. (Japanese Patent Publication No. 2000-
223096). 1 The Examiner also appears to maintain a § 102(e) rejection from
the final rejection of claims 1, 4, 6, 9-10 and 12 as anticipated by Kensuke
(JP Publication 2001-155789), but does not explicitly include a statement of
rejection in the “Grounds of Rejection” section of the Answer. Furthermore,
for each of these rejections, the Examiner has not made of record and
referred to complete and accurate English language translations of the
Japanese language patent publications. Rather, the Examiner makes
reference to computer (machine) translations of the text of the Japanese
documents. Indeed, the last page of the translations provided by the

1 These references have also been utilized in § 103 rejections.
2
Appeal 2008-1515
Application 10/495,434

Thompson Corporation states “Thomson Scientific Ltd shall not in any
circumstances be liable or responsible for the completeness or accuracy of
any Thomson Scientific translation and will not be liable for any direct,
indirect, consequential or economic loss or loss of profit resulting directly or
indirectly from the use of any translation by any customer.” Similarly, the
first page of the machine translation of Kensuke states “JPO and INPIT are
not responsible for any damages caused by the use of this translation.” Nor
has the Examiner referred to any other English language document of record
that would serve as an accurate and complete translation of the published
Japanese patent applications.
The ultimate question of patentability can only be answered after the
requisite factual findings have been made. Such factual findings can not be
made from unreliable translations. Obtaining and considering accurate
English language translations of the full texts of the relied upon foreign
language documents are necessary in furnishing reliable evidence of the
factual basis for making the ultimate determination of patentability.
Accordingly, this application is remanded to the Examiner for the
purposes of processing the May 19, 2008 IDS and clarifying the Examiner’s
rejections, including providing complete and accurate English language
translations of the relied upon Japanese documents.
Accordingly, we remand the application to the Examiner, via the
Office of the Director of the Technology Center, to consider the above
discussed issues and to take action not inconsistent with the views expressed
herein.
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R. §
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Appeal 2008-1515
Application 10/495,434

41.50(a)(2) applies if a Supplemental Examiner's Answer is written in
response to this remand by the Board.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REMANDED

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