Appeal No. 2001-2138
Application No. 08/403,276
the Board . . . the ‘substantial evidence’ standard is appropriate for our review of Board
factfindings. See 5 U.S.C. § 706(2)(E).”) In the present case, the absence of English
translations of the French documents is a serious gap in the evidentiary record.
The examiner has relied on two French patent documents as evidence of
unpatentability. In this case, it appears that Appellants have not been disadvantaged in
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responding to the rejections, as they provided the documents and are French nationals.
Thus, we may presume they reviewed and understood the French-language documents. In
reviewing the record presented on appeal, however, we cannot say the same of ourselves.
If we were to rely strictly on the documents of record, we would be unable to make
adequate factual findings regarding the teachings of the French language references, and
what they would have meant to one of ordinary skill in the art. Thus, we would be unable to
explain the evidentiary basis for our holding of affirmance or reversal. This alone is
sufficient basis for reversal or remand.
When the examiner, as here, relies on a document that is in a foreign language, the
examiner bears the burden of providing an English translation, at the latest, before
forwarding the appeal to the board. Similarly, when the Applicant relies on a document
that is in a foreign language for rebuttal of a rejection, the Applicant bears the burden of
producing an English translation to support his position. In the past, the board has often
RUS1 was filed with Paper No. 7 on August 1, 1996; RUS2 was filed with Paper No. 3 on April 3, 1995.5
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