Particularly with patent applications for non-U.S. clients that claim the priority of a foreign application, Examiners will sometimes cite to the
English abstract and figures of foreign patent documents that are not themselves available in English. Such art is sometimes taken from an IDS that was submitted
for the case. Reliance by the Examiner on the abstract alone in a rejection is generally improper and may be addressed as discusssed further below. Pointing out the
impropriety of the rejection may convince the Examiner to issue a new Office Action, which could result in another so-called bite at the apple before needing to file an
RCE or appeal.
Applicant respectfully notes that the cited foreign document [NAME] was submitted in the IDS filed [DATE], with a translated English abstract only. Per MPEP § 706.02(II):
When an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the
underlying full text document. Citation of and reliance upon an abstract without citation of and reliance upon the underlying scientific document is generally
inappropriate where both the abstract and the underlying document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001)
To determine whether both the abstract and the underlying document are prior art, a copy of the underlying document must be obtained and analyzed. If the document is in
a language other than English and the examiner seeks to rely on that document, 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.
(Emphasis added). In this case, the Office Action has only relied on the English Abstract of the cited document that was provided in the IDS. Accordingly,
Applicant respectfully requests that the Examiner provide an English translation of the underlying document, along with specific reasoning and citations to the underlying
document, if the Examiner maintains the rejection. In any case, Applicant respectfully requests that the rejection under [SECTION OF ART-BASED REJECTION] be withdrawn,
as the claims were improperly rejected in reliance on the English abstract of the cited foreign document only. Applicant respectfully notes that if the Examiner rejects
the claims relying on citations to the body of an English translation of the cited foreign document, it would constitute a new rejection as it would be presented for the
first time on the record, and therefore cannot be made final.