1204.04 Official Record on Appeal [R-08.2017]
37 CFR 41.30 Definitions.
Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.
Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
The official record on appeal contains the items listed in the content listing of the Image File Wrapper or the official file of the Office if other than the Image File Wrapper, excluding any amendments, evidence, or other documents that were not entered or indicated considered by the examiner. Because an examiner’s refusal to enter an amendment, evidence, or other document is a petitionable matter that is not subject to review by the Board, the exclusion of such non-entered documents from the definition of “Record” reflects the fact that the Board’s review of patentability determinations is properly based on the record of all entered and indicated considered documents in the file.
An information disclosure statement or petition that is held in abeyance while the Board possesses jurisdiction over the proceeding is not an entered or indicated considered document and therefore is excluded from the definition of ‘‘Record’’ until such time as it is entered or indicated to have been considered.
The definition of ‘‘Record’’ includes the items listed in the content listing of the Image File Wrapper because, in some cases, physical items that form part of the official file are not able to be scanned into the Image File Wrapper and are maintained elsewhere, such as in an artifact file. Some examples of such items include original drawings in design patent applications and sequence listings. In such cases, the Image File Wrapper will include an entry in the content listing that points to this artifact file or other record.
In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
All references listed on an Information Disclosure Statement (i.e., Form PTO/SB/08a or 08b), which have been indicated as having been considered by the examiner, or listed on a form PTO-892 are included in the definition of Record even if each of the so listed references does not separately appear in the content listing of the Image File Wrapper.
For the purposes of appeal, ‘‘Evidence’’ does not encompass dictionaries. Excluding dictionaries from the definition of ‘‘Evidence’’ thus allows appellants to refer to dictionaries in their briefs, which would otherwise be precluded under 37 CFR 41.33(d)(2) (absent existence of one of the enumerated exceptions). It further allows examiners to refer to dictionaries in the examiner’s answers without automatically rendering a rejection a new ground under 37 CFR 41.39(a)(2). Treating dictionaries in this manner is consistent with Supreme Court and Federal Circuit precedent, which contemplate that such materials may be consulted by tribunals ‘‘at any time.’’ See, e.g., Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations omitted) (admitting dictionaries to understand the ordinary meaning of terms ‘‘not as evidence, but only as aids to the memory and understanding of the court’’); Phillips v. AWH Corp., 415 F.3d 1303, 1322–23, 75 USPQ2d 1321, 1333 (Fed. Cir. 2005) (en banc) (‘‘[J]udges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.’’) (citation omitted); In re Boon, 439 F.2d 724, 727–28, 169 USPQ 231, 234 (CCPA 1971) (holding citation to dictionary was not tantamount to the assertion of a new ground of rejection ‘‘where such a reference is a standard work, cited only to support a fact judicially noticed and, as here, the fact so noticed plays a minor role, serving only to fill in the gaps which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection.’’ (emphasis and internal quotations omitted)). Thus, 37 CFR 41.30 permits both the applicant and examiner to submit them to the Board during the briefing stage.