Applicant fights hard to get Examiner to provide translation of foreign reference

Takeaway: The Examiner rejected using a Japanese language reference. The rejection specifically referred to a drawing in the reference, but the Examiner did not provide a translation of the text that appeared in the drawing. The Applicant raised this issue several times in prosecution. The Applicant also filed a Petition under § 1.181, requesting the TC Director to compel the Examiner to act. After the fourth request, the Examiner finally provided a translation of the text in the relied-upon drawing. The Applicant later appealed. (Appl. No. 11/474,530 to Arjomand, "Window Refrigerator," available on Public Pair.)

Details:
Appl. No. 11/474,530 to Arjomand "Window Refrigerator"
(file wrapper available on Public Pair)

The application was directed to a "refrigerator for home use having its front indoors and its condenser coil outdoors to save electricity whenever the outdoors is colder than indoors."

In the first Office Action (mail date July 16, 2009), the Examiner rejected the claims as anticipated by patent publication JP 063000416A. A machine translation of the reference specification was included with the Office Action. A few weeks after the Office Action was mailed, the Applicant filed a paper requesting the Examiner to provide a translation of the entire reference. (This scenario is covered by MPEP 710.06 "Situations When Reply Period is Reset or Restarted.") The request explained:

The Examiner provided a machine translation accompanied by a single Figure which does not appear to be the one relied on by the Examiner. Applicant could only find the published abstract online. Applicant requests that all figures be supplied and that new a response period be set.

Five weeks after the Office Action mail date, the Examiner had not complied with the Applicant's request, so the Applicant filed a Petition under 1.181. The Petition asserted that it was PTO policy to supply "clear" translations of foreign language references (citing Ex parte Rudd, Appeal 2007-3775). The Applicant requested the Technology Center director to compel the Examiner to take the following actions:

• supply the drawings from the cited reference
• if the drawings include text in Japanese, supply an English translation of such material
• set a new 3-month response period, as of mailing date of the drawings

Five days after the Petition was filed, the Examiner sent a copy of the entire reference – including figures – in Japanese. The Examiner also reset the period for Response, to start from August 31 rather than July 25.  The Applicant then filed a paper specifically requesting the Examiner to provide an English translation of foreign-language subject matter found in FIG. 5 (the sole figure relied upon by the Examiner). The Applicant also requested a new 3-month response period.

On Sept. 25, the Examiner sent a "Miscellaneous Action" with this explanation:

   The rejection based on the JP patent is solely for teaching "ref/freezer (fig. 5) that has a separate freezer compt (8) and a fridge comp (9) where a damper (18) is disposed adjacent the fridge compartment (fig. 5) and dependent on a reference frame of view, the damper is disposed ... (fig. 5.)"
    Therefore no additional English translation of fig. 5 is deemed necessary in view of the computer translation sent earlier. The response period for the outstanding Office Action mailed 8/25/2009 remains UNCHANGED.

The Applicant filed a Response to Office Action a few weeks short of the six month date of the new reply period. The Applicant amended claims but also brought up the issue of the missing translation for the drawings. According to the Applicant, the Examiner's refusal to provide a full translation left the Applicant unable to determine whether the Examiner was impermissibly picking and choosing from the teachings of the reference. (In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965)). This refusal denied the Applicant the "possibility of presenting an educated response to the Office Action." The Applicant also noted the pending Petition to the TC Director.

The Examiner issued an Office Action, which was Final because of the claim amendments. The Office Action used the same Japanese reference in the rejection, and said nothing about Applicant's renewed request for a translation.

The Applicant filed a After Final Response within the two month date, and once again brought up the Examiner's failure to provide a full translation. This time the Applicant made arguments about the level of skill in the art. The Applicant took the position that the poor translation of the Japanese language reference made it impossible to determine the level of skill in the art. As a result, the third Graham factor had not been resolved and the rejection was deficient.

The Examiner issued an Advisory Action and indicated that he would request a full translation. He nonetheless maintained that it was proper to rely on a translated abstract of a foreign reference. The Examiner also asserted that a POSITA would know that the abstract is accurate. Furthermore, since the abstract was sufficient, the level of skill has been established.

Three weeks after the Advisory Action, the Examiner sent the translated figures. The Applicant filed an RCE with all new claims and thanked the Examiner for supplying the translation. The Applicant appealed after the next Office Action, which used a new primary reference (also Japanese). The original reference remained.

My two cents: I think reasonable minds can differ about whether fighting about a missing translation is a good idea. I do think it's important to try to make some forward progress on the merits of the case, rather than getting stuck solely on the translation issue.

I like the idea of filing a petition while at the same time continuing raise it with the Examiner. Here, looks like the Applicant worn the Examiner down before the petition was decided.

I'm generally in favor of appealing early. But failure to provide a translation is a petitionable, not appealable, matter. So appealing early would be a bad idea if you wanted to limit your arguments to failure to provide a full translation. In other words, I think you need to address the Examiner's assertions about the reference, even if you don't have all the information you need to make a great argument.

You could say, as the Applicant did, that the insufficient translation means the Examiner failed to make a Prima Facie case. And, sure, Prima Facie case is certainly something you can raise on appeal. Still, the interaction of these issues – Examiner requirements during prosecution, level of skill, foreign language reference – is complex. So I wouldn't bet my appeal on the Board holding that incomplete English translation means no level of skill means no Prima Facie case.

Finally, the Applicant could have bypassed the Examiner and gotten its own translation. Could be that costs actual money. But maybe not a lot. After all, it was only the Japanese text on the figures themselves that the Applicant was fighting about at the end. The Examiner had already provided the English language text of the entire specification. (After a specific request by the Applicant, that is.)