tag:blogger.com,1999:blog-6733236595417664807.post3315101820599919204..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Dealing with foreign referencesKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-6733236595417664807.post-13068315910222093952012-11-23T02:05:10.008-05:002012-11-23T02:05:10.008-05:00Thank you to providing such kind of blog. Foreign ...Thank you to providing such kind of blog. <b><a href="http://www.translations2u.com/translation.html" rel="nofollow">Foreign Document Translation</a></b><br />Anonymoushttps://www.blogger.com/profile/03907539138358126671noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-58612030614019068982010-06-27T16:20:17.013-04:002010-06-27T16:20:17.013-04:00>there are two distinct references that are at ...>there are two distinct references that are at <br />>issue in the case under discussion. <br /><br />I'm not positive which is the "case under discussion" since my post discussed 5 different cases. I'll assume you're referring to Ex parte Park.<br /><br />>pub. 1 which is a foreign publication. <br />>pub. 2 which is an English abstract of >publication 1. They are different documents. <br />>Each with their own publication dates. <br /><br />I think we're talking about the Inada ref. in Ex parte Parks. <br /><br />What makes you think Inada's abstract is a "different document" than the underlying patent publication? Inada is not a journal article with a separately published abstract. Inada is a Japanese patent app, which according to the JPO published on 06.05.1997. <br /><br />I see no evidence whatsoever that Inada's abstract has a different publication date. <br /><br />I've never heard any patent systems in which abstracts have different publication dates than the underlying patent app.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-26962861674587483702010-06-23T16:39:06.722-04:002010-06-23T16:39:06.722-04:00Karen, once again, as if on cue, you at least make...Karen, once again, as if on cue, you at least make an effort to appear to have misconstrued either of, or both, of the facts underlying the case and what happened in the actions leading to the decision. I'm not sure how you manage to confuse your language used in your postings, but you manage it every other week. <br /><br />First of all we must understand that there are two distinct references that are at issue in the case under discussion. There is publication 1 which is a foreign publication. There is publication 2 which is an English abstract of publication 1. They are different documents. Each with their own publication dates. <br /><br />In this case, the examiner relied solely upon publication 2, completely disregarding publication 1. The reference is in english and if it was available as prior art per it's pub date then it is fine to use it as a reference. This is different than what appears to have happened in the other cases you cite. <br /><br />The other cases are completely different factually than this case. In those cases the examiner relied on "reference 1" (the foreign pub) using "reference 2" (the english abstract of that pub) as evidence of what reference 1 actually taught. They did this simply to avoid having to get a translation of the reference itself. That is why the board made them go get a translation in some of those cases. I can't read Jones, but they are generally right that the abstract shouldn't be used alone. However, where the abstract was a printed publication distinct from the original foreign filing it should be just as available as any other printed publication as of its pub date and if it is prior art then so be it. <br /><br />As to the "fundamental unfairness" of this I'm a bit at a loss for words. If someone taught what you did in an abstract or made a teaching that renders your invention obvious then that should be no different than if they had taken the time to expand their small publication ("abstract" if you must) into a huge paper. Of course one must take into account enablement and all that, but beyond those things, that "abstract" reference is just as valid a reference as the foreign one that spurred its creation. <br /><br />Furthermore, if you're simply stating that it is "unfair" that the examiner doesn't need to provide a translation of the foreign document (e.g. reference 1) if he simply relies on the abstract as a reference then you're crazy gal. The abstract is (in most cases as noted in Jones) a distinct document. If the examiner relies on the distinct document in a vacuum as it were, without the "parent" ref, then deal with it in a vacuum. <br /><br />As to your comment about "appealable" v. "petitionable" I don't know how in the world you think that this would rise to the level of an appealable matter. Anything other than an appealable matter gets tossed in the dustbin of petitions as is proper.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68145748680165613982010-06-22T11:15:07.639-04:002010-06-22T11:15:07.639-04:00Michael,
Good point. If a particular issue can be...Michael,<br /><br />Good point. If a particular issue can be taken care of by discussing with the Examiner, then certainly that's preferable to escalating to appeal or petition.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-14065458394598951212010-06-22T09:11:54.335-04:002010-06-22T09:11:54.335-04:00In instances where the examiner has not provided a...In instances where the examiner has not provided a translation, I suggest calling the examiner and asking if they will order a translation.Michaelnoreply@blogger.com