Takeaway: The Examiner rejected claims under § 102(b) as being anticipated by a WIPO publication in French, as evidenced by a US patent publication by the same inventor. On appeal, the Applicant argued that the rejection was improper because the Examiner did not provide a translation of the WIPO publication nor show that the US patent publication was the same as the WIPO publication. In the Answer, the Examiner explained that the US patent publication was the national stage entry of the WIPO international publication. The Board found the rejection was proper because the Examiner had shown that both publications corresponded to the same document, and the Applicant did not refute this finding. The Board then affirmed the anticipation rejection on the merits.
Ex parte Kornfalt
Appeal 2010008703; Appl. No. 10/581,261; Technology Center 1700
Decided August 30, 2011
In a non-final Office Action, the Examiner rejected a set of claims under § 102(b) as anticipated by a French language publication, WO 03/060256 to Grau, "with evidence by Grau (U.S. 2005/0115181) and Bollinger [a 2003 publication of the periodical Hardwood Floors." The Examiner further indicated that "Grau '181 is interpreted as the English equivalent to [French] Grau '256."
In response, the Applicant distinguished the claims from Grau. However the Applicant also questioned the use of an anticipation rejection using multiple references, and the use of Grau '181 in particular. The Applicant cited to MPEP 2131.01, which explains three scenarios in which multiple references are proper. The Applicant argued that the Examiner "did not identify any of these purposes [in MPEP 2131.01] in the citation of the additional two documents." The Applicant also noted that English language Grau '181 is not prior art under § 102(b), since it was published after Applicant's priority date. As such, the Applicant concluded that "Grau '181 cannot be used as 'evidence' for the teaching of [French language] Grau '256."
In the subsequent final Office Action, the Examiner maintained the anticipation rejection and explained why the Applicant's arguments were not persuasive. The Examiner did remove Bollinger from the rejection, but maintained "Grau (WO 03/060256) evidence by Grau (US 2005/0115181)." The Examiner explained that "Grau '181 is not cited as prior art but rather as the English translation of Grau '256." The Examiner noted that the burden had shifted to the Applicant: "If Applicant believes that the translation of Grau '256 is not accurate as relied on the Applicant is requested to point out any such material discrepancy."
The Applicant filed an After Final Response which corrected a typographical error in the claims. The Applicant continued to argue that the anticipation rejection was not proper because Grau '256 "is not prior art under any applicable section of USC 102." The Applicant argued that the Examiner had improperly shifted the buden:
If the examiner contends that the Grau WO reference, though in a foreign language supports his rejection, the burden is upon the examiner to obtain a translation of Grau WO and he cannot shift this burden to applicants to obtain their own translation when it is clear that Grau WO does not support the examiner's contentions as will be discussed in detail below.
The Examiner issued an Advisory Action entering the claim amendment and including a copy of the Grau '256 WO publication. The Examiner stated that "Grau '256 appears to be equivalent to Grau '181." The Advisory Action also included an explanation of how the Examiner was interpreting the claims.
The Applicant filed a Notice of Appeal. In the Appeal Brief, the Applicant made substantive arguments distinguishing the claims over Grau. But the Applicant also continued to challenge the use of the 'Grau 256 WO publication:
Initially, the Examiner states that Grau '181 is the English equivalent to Grau '256. The Examiner provides no reasoning for making a statement nor to applicant's knowledge is there evidence that Grau '256 contains the teachings relied upon by the Exanliner with reference to Grau "181. It is of course a basic concept of Patent law that the party asserting a reference as prior art has the duty to establish that it is, in fact, prior art ... [A]s Examiner has never provided applicant with an English language translation of Grau '256, Applicants submit that the Examiner has not established that Grau '256 is anticipatory of the claimed invention.
In the Answer, the Examiner backed up his assertion that Grau '181 was the English equivalent of the relied-on Grau '256 WO publication, by showing a family relationship between the two:
Grau (US 200510115181) is the national stage entry of PCTlFR03100025 filed 1/7/2003. The international application number for Grau (WO 031060256) is the same PCTlFR03100025 with filing date of 1/7/2003. Grau (WO 031060256) was published on 7/24/2003 which is before the Swedish filing date of 1211 112003 of Applicant's application.
The Board found that the Examiner had properly relied on Grau ‘181 as the English translation of Grau ‘256, since the Examiner did make the requisite factual findings:
As is apparent from pages 19 and 20 of the Answer, the Examiner has supplied a factual proof for finding that both Grau ‘256 and ‘181 correspond to the same document, PCT/FR03/00025 filed on January 7, 2003. Appellants have not disputed the accuracy of this proof. Nor have Appellants shown any inconsistencies between the disclosures of Grau ‘181 and Grau ‘256.
The Board then went on to affirm the anticipation rejection on the merits.
My two cents: I wouldn't file an appeal on this point alone, but the Applicant did have substantive arguments too. As long as you're fighting on substance, I don't see anything wrong with also arguing about "technicalities." Here. that means forcing the Examiner to thoroughly explain his use of the English language, non-prior art Grau as "evidence" of the teachings of the French language, prior-art Grau.
The most interesting thing about this case is how many rounds it took for the Examiner to explain the family relationship between the two Grau references. If the Examiner had explained that before appeal, the Applicant might have stopped insisting on a translation.
Not sure why the Applicant didn't dig up the family relationship himself, since there's enough information on the WIPO website to figure it out. So if you encounter a similar situation with a non-prior art patent publication being used as "evidence" as a prior art patent publication, you might want to see if there is an easily discoverable relationship between the two.