Ex Parte Rudd et al

Board of Patent Appeals and Interferences

Jun 25, 2008

09952997 (B.P.A.I. Jun. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL L. RUDD and JERLYN R. CULP
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Appeal 2007-3775
Application 09/952,997
Technology Center 2100
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Decided: June 25, 2008
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, ST. JOHN
COURTENAY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-11, 23, and 24. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2007-3775
Application 09/952,997

II. PROCEDURES
"Prior art . . . often includes . . . foreign patent documents which may
not be in the English language." MPEP § 706.02 (8th ed., rev. 6, Sep.
20007). "If the document is in a language other than English and the
examiner seeks to rely on that document, a translation must be obtained so
that the record is clear as to the precise facts the examiner is relying upon in
support of the rejection." Id. "Examiners may request written translations at
any point in the examination process . . . but are encouraged to use . . .
language reference resources as much as possible in the early phases of
examination." Id. § 901.05(d).

III. ANALYSIS
Here, the Examiner rejects claims 1-11, 23, and 24 under 35 U.S.C.
§ 103(a) as obvious over Japanese Patent No. JP10283288 ("Hidetoshi") and
Japanese Patent No. JP11102332 ("Mitsunobu"). In explaining the rejection,
he cites to translations of Hidetoshi and Mitsunobu. Generated by machine,
the translations warn that they "may contain errors" (Hidetoshi machine
translation, p. 1) and contain the following disclaimer: "The JPO, the NCIPI,
and those who drafted this document in the original language are not
responsible for the result of the translation." (Mitsunobu machine
translation, p. 1.)

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Appeal 2007-3775
Application 09/952,997

Our review of the machine translations have uncovered numerous
problems therewith. In the translations, "[u]ntranslatable words are replaced
with asterisks (****)." (Hidetoshi machine translation, p. 1.) The machine
translation of many of the specific paragraphs on which the Examiner relies
include such untranslatable words. For example, the machine translation of
Hidetoshi's paragraph 26 includes three instances of untranslatable words.

Furthermore, the machine translations "appear to be a literal
translation into English from a foreign document and are replete with
grammatical and idiomatic errors." MPEP § 706.03(d). Major parts of the
machine translations are unintelligible to us. Examples follow.
• In order to solve this technical problem [the Internet terminal
equipment of this invention] The input section which inputs
directions of a user, and the modem which changes data format
from the analog from digital one, or an analog like digital one,
The circuit interface section which ****** analog data through
PSTN, The speed test section which measures the transmission
speed of the analog data ******(ed) through the circuit
interface section, The coding section which compresses and
restores digital data and makes size of a transmitting file small,
The accumulation section which saves a transmitting file and a
reception file, control of the whole system, and control of the
communications protocol were performed, and when the
transmission speed of the data measured by the speed test
section at the time of a communication start is below a
threshold, it has the composition which has the control section
which directs compression and restoration of transmit data in
the coding section. (Hidetoshi machine translation, ¶ [0022].)
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Appeal 2007-3775
Application 09/952,997

• [then, the user of Internet terminal equipment 101 ] The
information on various form written by URL is accessed, An E-
mail can be exchanged through the server which understands
an POP protocol (S104). After acquiring the IP address of the
server corresponding to directed URL or the e-mail address
from the server called DNS (S105), a connection is required of
a server (S106). [ a control section 110 ] if a connection with
the server corresponding to URL or the e-mail address directed
at Step 104 is established (S107) When it judges whether the
data transmission rate of the modem 103 measured by the speed
test section 105 is smaller than a threshold (S108) and judges
with it being smaller than a threshold It sets up to encode the
coding section 106 and the file which transmits to 125 (S109),
and communication of data is required (S110). Next, the
coding section 106 of Internet terminal equipment 101 and the
coding section 125 of the Internet repeating installation 121,
respectively After encoding the file which transmits (S111),
data communication is performed through the circuit interface
section 101 and 122 (S112), and the file which received is
decrypted (S 113). (Hidetoshi machine translation, ¶ [0043].)
• "Moreover, take in data from a computer network, change into
a picture signal, display on a screen, and it sets to the
information-display equipment which an E-mail is created and
can be transmitted." (Mitsunobu machine translation, ¶
[0009].)
• A means to take in image data from other than said computer
network, It is characterized by having a means to display on the
screen for reducing the image data which the memory which
memorizes the image data which this means took in, and this
memory memorized to a predetermined size, and creating an E-
mail, and a means to transmit the image data which said
memory memorized when transmitting this E-mail. (Id.)
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Appeal 2007-3775
Application 09/952,997

• This E-mail creation screen of having the destination column,
the title column, the CC (carbon copy) column, and the contents
column is the same as the E-mail creation screen of only the
conventional text, and the image display field 47 which newly
displays the picture captured from the digital camera is formed.
(Id. ¶ 0029 (emphases added).)
• If a user decides the number added to the picture to capture and
specifies by a soft keyboard 47a here, while image data will be
taken in automatically and RAM33 will memorize temporarily
It is displayed on the image display field 48 of an E-mail
creation screen ( drawing 7 ) by the Image Processing Division
section 39 and image memory 40 grade. (Id. ¶ [0030].)
• "[W]hen the reception destination of the transmitted E-mail is a
thing excellent in display functions . . . ." (Id. ¶ [0032].)

IV. CONCLUSION
In an ex parte appeal, the Board of Patent Appeals and Interferences
"is basically a board of review — we review . . . rejections made by patent
examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
Here, after considering the record, we are persuaded that "[t]he appeal is
manifestly not ready for a decision on the merits." Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999).

V. ORDER
We remand the application to the Examiner to "consult the translators
in the Translations Branch of the Scientific and Technical Information
Center (STIC)" MPEP § 901.05(d) to obtain written translations of
Hidetoshi and Mitsunobu into English.

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Appeal 2007-3775
Application 09/952,997

"Because it is being remanded for further action, the application is a
'special' application. MPEP § 708.01(D). Accordingly, it requires
immediate action. Furthermore, the Board should be informed promptly of
any action affecting status of the appeal (e.g., abandonment, issue, or
reopening prosecution)." Ex parte Feldman, No. 2007-2390, 2008 WL
460205, at *2 (BPAI 2008).

REMANDED

rwk

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