Absent a recent decision of either the Board or a court, no new evidence may be submitted on appeal at the PTO that was not before the primary examiner. Here, for example, the applicant’s introduction only during the Board hearing of affidavits in support of a Rule 131 declaration was found to be untimely. “The exception stated in § 41.47(e)(2) only allows appellants to rely on a new argument when it is based upon a recent decision of either the Board or a court.” It may therefore be best to ensure that all evidence including affidavits that may be helpful on appeal are first submitted during the course of regular examination.
Background / Facts: The application on appeal here from rejection at the PTO is directed to a web integrated debt records and debt collection system. After unsuccessfully traversing the prior art, the applicant sought to swear behind it under Rule 131. To this end, the applicant, proceeding pro se, submitted a declaration and various exhibits, but the examiner found them to be at the same time both insufficient and lengthy to the point of incomprehensible. During appeal, the applicant submitted an additional table and other affidavit materials in an attempt to show conception.
Issue(s): Whether evidence supplied by two independent third-party witnesses, whose affidavits were offered and discussed during the Board hearing, should have been considered on appeal.
Holding(s): No. “[The applicant] argues that the two third-party affidavits were properly before the Board, stating that 37 C.F.R. § 41.47(e)(2) permits new evidence for good cause. This regulation does not so provide. Section 41.47(e)(1) states that appellants before the Board shall ‘only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief.’ The exception stated in § 41.47(e)(2) only allows appellants to rely on a new argument when it is based upon a recent decision of either the Board or a court. See 37 C.F.R. § 41.33(d)(2) (‘All other affidavits or other evidence filed after the date of filing an appeal … will not be admitted.’).”