Monday, September 5, 2011

BPAI finds it proper to use corresponding US application as translation of foreign patent application


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.



Details:
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.

13 comments:

  1. " 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."

    Uhm, because arguing the "technicalities" in this case makes you look like an idiot. That's why.

    "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."

    Ugh. Really? The examiner needs to explain that to us? You can't look at the info on the front of the patent or published app and see that they share the same priority document? You can't look at the foreign language version and see for yourself that it has the same exact drawings as the English language version?

    "Not sure why the Applicant didn't dig up the family relationship himself,..."

    Lazy and/or stupid.

    "... since there's enough information on the WIPO website to figure it out."

    There's enough info on the faces of the documents to figure it out.

    Practitioners like this are simply embarrassing to the rest of us. Please go chase ambulances or something else.

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  2. "Uhm, because arguing the 'technicalities' in this case makes you look like an idiot."
    Uh no, although "technicalities" may seem an annoyance to you, there is a reason for everything. Here, there is no indication that just because it is a national stage (or even shares the same drawings) that it necessarily includes the same disclosure. It is claiming PRIORITY, which does not require that the disclosures be the same.

    "The examiner needs to explain that to us?"
    I know 6-tard, you hate doing your job ... then again, it would have taken about 10 seconds to type that sentence.

    "Practitioners like this are simply embarrassing to the rest of us."
    The "rest of us"? Come on 6-tard, you are not part of us and never will be.

    ReplyDelete
  3. "Uh no, although "technicalities" may seem an annoyance to you, there is a reason for everything."

    6tard didn't post the first comment. I did. And I'm a practitioner.

    If you can't look at the publication of a PCT application in French, and then look at the published U.S. national stage application and make a reasonable determination, on your own, without the examiner holding your hand for you, you should be handling insurance claims, not prosecuting patent applications.

    "Here, there is no indication that just because it is a national stage (or even shares the same drawings) that it necessarily includes the same disclosure. It is claiming PRIORITY, which does not require that the disclosures be the same."

    In order to enter the U.S. national stage, the applicant had to file a copy of the PCT application. In order to get the case out of the office of PCT operations at the PTO, classified, and onto an examiner's docket, the applicant had to file a certified translation of the PCT application from French into English. Therefore, the U.S. national stage application is the exact same application as the French PCT application.

    You don't see that?

    You're as embarrassing as the guy who argued this "technicality" to the BPAI.

    ReplyDelete
  4. national stage is pretty much exact translation, for better or worse, Euros are real sticklers about that

    ReplyDelete
  5. The Examiner was lazy and should have explained the relationship between the Grau applications from the get-go. Having said that, I agree that the practitioner should have easily been able to establish the relationship between the two applications. I would hate to set the precedent that a national stage entry is not presumed to virtually identical to its foreign language PCT application. The burden did shift to applicant to translate the published PCT application to see if there were any discrepencies. It can be expensive so I can see how the applicant was most likely trying to get the Examiner to provide a certified translation of the PCT application via the PTO Translation Branch.

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  6. "The Examiner was lazy..."

    I'm not one to excuse lazy examiners, but in this case the examiner should not have to hold the attorney's hand. A first year associate could have figured out the "relationship" between the French and English documents (they are the same!!!!!). Good lord what are we coming to when a partner at a supposedly reputable firm like this is making sh!t arguments like this? Is he at all embarrassed that the Board slapped down his weak a$$ argument with no effort whatsoever?

    It's sh!tty "advocacy" like this that has gotten us stuck with In re Jung and its ilk (e.g. the case where they argued that a provisional couldn't serve as the 102(e) date, In re Giancolini or whatever the heck the applicant's name was). Let's not forget Hyatt v. Dudas.

    Stop making these crappy arguments and taking them to the BPAI and the Federal Circuit. The level of whining and crying from the patent bar in these cases is just embarrassing.

    ReplyDelete
  7. MPEP 1207.01 states as follows on MPEP page 1200-22: If a document being relied upon by the examiner in support of a rejection is in a language other than English, 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. The translation may be a machine translation or an English equivalent of the non-English document.

    ReplyDelete
  8. "A first year associate could have figured out the "relationship" between the French and English documents"

    That may be so but the burden was on the Examiner and the Examiner was lazy. I'm, of course, giving the Examiner the benefit of the doubt that the Examiner knew from the start that the two Grau references came from the same priority claim.

    The Examiner was lazy, and the practitioner, IMHO, was trying to get a free translation of the priority document from the Examiner.

    ReplyDelete
  9. "I know 6-tard, you hate doing your job ... then again, it would have taken about 10 seconds to type that sentence."

    I do believe that you're responding to an attorney tardface. Not me.

    6

    As it turns out, there are attorneys in the world that think similar to me on many issues, including attorney whining lol.

    PS I do not use the world "Ugh". I really h8 that word in type. Almost as much as I h8 it irl. Unless you just got punched in your stomach. Preferably for having said "Ugh" in the first place without having first been punched in the stomach.

    Ugh is a dispicable ugly word.

    ReplyDelete
  10. "I do believe that you're responding to an attorney tardface. Not me.

    6"

    Ugh.

    "That may be so but the burden was on the Examiner and the Examiner was lazy."

    Ugh. The examiner gave all the explanation that was needed. Are you telling me that a partner in a law firm can't figure out the relationship between a published PCT application and its corresponding published U.S. national phase application?

    Ugh.

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  11. "That may be so but the burden was on the Examiner and the Examiner was lazy."

    The examiner explained, clear as a bell, on page 2, paragraph number 4, of the October 7, 2008 Office Action that Garu '181 (the published U.S. national phase application) was the English language equivalent of Garu '256 (the published French PCT application).

    What f#cking more do you need??????!!!!!!!!

    Are you telling me that an examiner has to explain to a partner in a law firm the "relationship" between equivalent applications/publications????!!!!!

    You have got to be kidding me!!!!!

    You know, I constantly read these blog comments from examiners that state that the attorneys they are dealing with are real dolts. I truly want to believe that they are not true. But after reading the nonsense from some of the posters here, I have to admit it's true. Some of the people in the patent bar, including the idiot partner who argued this "technicality", are so GD imcompetent that it is scary. Please turn in your registration numbers. Now.

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  12. I wanted to add that, in response to an Examiner citing a foreign reference as part of a rejection but only providing me with a translated abstract, I found an English language counterpart of the foreign rejection and used that English-language counterpart to traverse the Examiner's rejection. The Examiner withdrew the rejection in the next Office Action. What's sauce for the goose.....

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  13. Now that's an example of an examiner being lazy. If you haven't figured out how to find the equivalents of published apps and patents, please do so. That goes for examiners and practitioners.

    ReplyDelete