Ex Parte Horai et al

Board of Patent Appeals and Interferences

Oct 25, 2007

10640246 (B.P.A.I. Oct. 25, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKASHI HORAI,
SYUJI TSUKAMOTO, NARUTOSHI FUKUZAWA,
and HIROYUKI ARIOKA
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Appeal 2008-0014
Application 10/640,246
Technology Center 1700
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Decided: October 25, 2007
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Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
ORDER REMANDING TO THE EXAMINER
We remand the application to the examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. §41.50(a)(1) (2007);
Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 5,
August 2006).
In the ground of rejection of the appealed claims under 35 U.S.C.
Appeal 2008-0014
Application 10/640,246
§ 103(a) as unpatentable over Takazawa, the Examiner contends that one of
ordinary skill in this art would have modified the mixture of two compounds
in Takazawa’s Example 10 with respect to the amount of the second
compound based on other disclosure in the reference, in order to meet
certain limitations in independent claim 1 and the other appealed claims.
Answer 3-4 and 5-9. Appellants’ contentions are based on other disclosures
than Example 10 of Takazawa as well. Br. 11-21; Reply Br. in entirety.
Thus, our consideration of the issues raised by the Examiner and
Appellants requires consideration of Takazawa as a whole. Indeed, it is well
settled that a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23
USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of this
person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
The difficulty we encounter in considering Takazawa is that the
document the Examiner relies upon and is thus considered by Appellants, is
a “computer” translation of Takazawa prepared by the Japanese Patent
Office which is obviously an incomplete and inaccurate translation. Indeed,
the document contains the caveat that the translation “may not reflect the
original precisely” and other disclaimers under “Notices.” Takazawa
translation 1. We have not found any other translation of this reference in
the electronic files of the USPTO for this Application.
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Appeal 2008-0014
Application 10/640,246
Our consideration of the issues presented in this appeal requires a
clear and accurate translation of the original Japanese patent document to
Takazawa in order to determine all of the specific teachings thereof as well
as the inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom.
Accordingly, the examiner is required to take appropriate action
consistent with current examining practice and procedure to obtain an
authoritative translation of the original Japanese reference to Takazawa,
P2001-150815A, enter the translation into the electronic records of the
USPTO, and consider the issues in this appeal in light of the actual
disclosure in the original Japanese patent document provided by the
authoritative translation, with a view toward placing this application in
condition for decision on appeal with respect to the issue presented.
If, in response to our remand, the Examiner submits a supplemental
answer to the Board which further considers the ground of rejection of the
appealed claims under 35 U.S.C. § 103(a) as unpatentable over Takazawa as
authoritatively translated, “appellant must within two months from the date
of the supplemental examiner’s answer exercise one of” the two options set
forth in 37 C.F.R. §41.50(a)(2) (2007), “to avoid sua sponte dismissal of the
appeal as to the claims subject to the rejection for which the Board has
remanded the proceeding,” as provided in this rule.

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Appeal 2008-0014
Application 10/640,246
We hereby remand this application to the examiner, via the Office of a
Director of the Technology Center, for appropriate action in view of the
above comments.
REMANDED

tc/ls

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
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