Friday, April 8, 2011

BPAI reverses rejection based solely on drawings in foreign reference

Takeaway: In Ex parte Ouelette, the BPAI reversed an anticipation rejection that relied exclusively on a drawing in foreign language reference. "The figures are so small and blurred as to be unreadable so that the exact position and operation of the formers 7 cannot be determined. The Niwa written disclosure does not provide assistance in this regard."

Ex parte Ouelette
Appeal 200700807; Appl. No. 10/298,456; Tech. Center 3700
Decided  May 1, 2008

The Applicant claimed specific structures of a conveyor, including a diagonally oriented lower guide surface and an opposing diagonally oriented upper guide surface, where the lower guide surface slopes upwardly and the upper guide surface slopes downwardly. [Paraphrase of claim 6.]

The Examiner rejected under § 102(b) using only the drawings from a Japanese patent (shown below). In the Final Office Action, the Examiner alleged that the patent showed "opposing upper and lower lateral guides 7 that are inclined toward each other (see Figure 1 and compare Figures 2-4) to position the film on the sides of the objects." [Reference numbers 7 shown in red below.]

On appeal, the Applicant made several distinctions. One of the distinctions was that "the only diagonally oriented edges of the members 7, 9 disclosed by the Japanese publication overlap each other, and do not oppose each other."

In the Response to Argument section of the Answer, the Examiner explained that the Applicant had misinterpreted the final rejection:
It should first be noted that element 9 is not a guide surface, as mentioned by applicant, and it was not referred to in the Final Rejection but as shown in figure 1 of the publication 9 is plate positioned under the film (also see Figures 2-4). The rejection referred to the two guide surfaces 7 that are inclined upward and downward to create the film folds.

The Examiner then clarified the rejection in the body of the Answer:
The [guides] are vertically opposed each other in that they start out in the upstream position in spaced and opposite relations, i.e. upper and lower positions, and end up in an overlapped position and opposite each other, i.e. lower and upper positions, as they pass each other to perform the folding of the two edge of the film. Furthermore, the guide surfaces can be considered to be horizontally opposed each other in that they are facing each other in parallel planes.

The Applicant filed a Reply Brief, noting that:
These comments [in the Answer's Response to Arguments section] point out the ambiguousness of the Japanese reference. In Figure 2 of the reference, it appears that the reference No. 9 is being directed to one of the four angled elements arranged adjacent the four corners of the object 4. One of the angled elements, the element adjacent the upper right-hand corner of the object 4 shown in Figure 2 is labeled with the reference No. 7. The other three angled elements apparently are not labeled. The drawing figures of the reference are so ambiguous, it is not clear as to whether all four of the angled elements are identified by the reference No. 7.

The Applicant further argued that "in view of the ambiguousness of the Japanese reference alone, the reference is not a valid reference for an anticipation rejection."

After the Reply Brief was filed, the Examiner provided a translation of the Japanese reference for the record.

In the Decision on Appeal, the Board made the following Finding of Fact:
The figures do not clearly depict the other elements of the device. Specifically, the figures are so small and blurred as to be unreadable so that the exact position and operation of the formers 7 cannot be determined. The Niwa written disclosure does not provide assistance in this regard.

 The Board reversed the rejection, explaining that:
Any conclusions about the position and function of the formers 7 can only be made by speculation" A reference relied on to prove unpatentability must be so  clear and explicit that those skilled in the art will have no difficulty in ascertaining its meaning. See In re Turlay, 304 F.2d 893, 899 (CCPA 1962).

My two cents: I don't handle a lot of mechanical cases, but two things seem clear to me. One, spatial and positional relationships between components are often key to the claims. Two, drawings are often very important in showing these relationships, but sometimes a written description is helpful in explaining the drawings. Here, the drawing included lots of features, which made it hard to see what the reference numbers pointed to, and there was no translation provided before appeal. So it makes sense to me that the Board found this rejection deficient.

I'm disappointed that the Board didn't even mention that the Examiner didn't provide a translation until after the Reply Brief. The Board should have slammed the Examiner for this oversight. 

Then again, don't expect the Board to do your work for you. The Applicant should have demanded a translation of the Japanese reference, citing MPEP 706.02. You can't really force the Examiner to comply, but it can't hurt, right? See my post "Dealing With Foreign References".


  1. I'm too lazy to find the cite, but there is a case that essentially states that unless the specification of the prior art states that the drawings are "to scale," then you cannot rely upon the spatial relationships illustrated therein.

  2. It's hard to figure out who was lazier, the applicant in not demanding a translation (see MPEP 706.02 II) or withdrawal of the rejection, or the examiner in not providing a translation until after the reply brief.

    Here's a free practice tip: You can't meet examiner laziness with your own laziness.

  3. The case you're thinking of is Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue."

    But Hockerson is about dimensions, rather than spatial relationships. So I think it's inapplicable here.

    Drawings can certainly be used to show claimed spatial relationships. But those relationships have to be clearly illustrated in the drawings. And the Board say that the drawings in Ouelette did not do so.

  4. The lazy arse primary who "examined" this app is now an agent at an Alexandria prosecution mill!!!! Oh the irony!!!! Hopefully when he gets an anticipation rejection based on a foreign reference, he has the wherewithal to demand a translation.

  5. I have requested translations many time and most time the examiner either refused or used a very poor machine translation of a Japanese patent. Moreover some examiners make use of an abstract only translation even though the MPEP disapproves of it.
    No providing a translation is a first order indicator that the examiner considers the rejection to be weak, and not supported by the translation.

  6. I was in an interview with an examiner once who gave me a 102(b) rejection on a Japanese reference. I told the examiner that a translation had to be provided. The examiner stated that no translation had to be provided because only the drawings were relied on in the rejection. I burst out laughing.

  7. Thanks for all the comments saying "Applicant can/should request a translation." I updated my blog post to mention this.

  8. >No providing a translation is a first order
    >indicator that the examiner considers the
    >rejection to be weak, and not supported by
    >the translation.

    Yeah, probably true in most cases. But in reviewing the file history here, I think the Examiner was really dug into his position. The Examiner did explain in great detail how he was interpreting the [small and blurred] figures.