Appeal No. 2001-2138
Application No. 08/403,276
expended the resources necessary to obtain a translation of a foreign language patent or
technical article. When it did so, however, the burden of examining the claims with respect
to that translation fell on the board in the first instance. Moreover, to the extent that the
board relies on parts of a translation not previously provided to an applicant, any
affirmance generally has to be a new ground of rejection under 37 CFR § 1.196(b)—which
can result in further prosecution. Clearly, this procedure is inefficient and wastes the time
and resources of the USPTO and Appellants.
Efficient prosecution dictates that, when a rejection (or rebuttal) is founded on a
document that is not in English, a translation be provided as soon as possible. When, as
here, the Applicants can read and understand the reference, and when there appears to be
no dispute about what the reference teaches, reliance on a translation provided to the
board along with the examiner’s Answer may not merit a new ground of rejection. When
the Applicants or their representatives cannot read the non-English language, however,
they may not be able to form an adequate understanding of the reference to rebut the
rejection on the merits or to amend the claims to avoid the reference. In such cases,
Applicants should insist that the examiner provide a translation before a final rejection is
entered, seeking supervisory intervention if necessary. By the same token, if Applicants
rely on a foreign language reference to rebut a rejection, the examiner may insist on a
translation as a condition of a complete response, just as a declaration submitted in a
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