Interference No. 103,586
8
identify the exhibit as to what it is as well as to explain the witness’s relationship to the
document in question. In addition, authenticity of an exhibit must be established both as to
subject matter (content) and time. 4 Rivise & Caesar at § 563, page 2418. Documents
9
do not speak for themselves. They must be explained even if they contain a label and a
10
date. Further, 37 C.F.R. § 1.671(f) requires a witness to explain the entries on the
Extrinsic evidence of authenticity as a condition precedent to admissibility is not8
required for self-authenticating evidence. See FRE 902.
Amoss v. McKinley, 195 USPQ at 453-454. The extent to which an exhibit is9
explained depends on the simplicity or complexity of the subject matter as well as technical
background of tribunal hearing the case. 3 Rivise, at § 435, page 1891. Herein, because
of the complexity and the terminology used in the biotechnical arena, it is most imperative
that a witness’s explanation as to authorship and content of a document be sufficiently
clear and detailed as to the specific entries in the exhibits relied upon by a witness. It is
not sufficient to provide a bare allegation that certain work was done citing certain pages
of notes or notebooks attached to the affidavit or declaration. It is not the burden of the
Board to try to read the exhibits and to correlate allegations made in the testimony with
specific entries. Amoss, citing Gipstein v. Contois, 191 USPQ 688, 690 (Bd. Pat. Int.
1975); and Golota v. Strom, 489 F.2d 1287, 1292-1293, 180 USPQ 396, 400-401 (Bd.
Pat. Int. 1975); Triplett v. Steinmayer, 129 F.2d 869, 871-872, 54 USPQ 409, 411-412
(CCPA 1942); Chandler v. Mock, 150 F.2d 563, 567-568, 66 USPQ 209, 213-214 (CCPA
1945); Teel v. Cotton, 151 USPQ 428, 430-431 (Bd. Pat. Int. 1966); Popoff v. Orchin, 144
USPQ 762, 763 (Bd. Pat. Int. 1963); and In re Borkowski, 505 F.2d 713, 194 USPQ 29
(CCPA 1974).
C.F.R. § 1.671(f) states that “[T[he significance of documentary and other10
exhibits shall be discussed with particularity by a witness during oral deposition or in an
affidavit.” See Patent Interference Proceedings: Final Rule, 49 F.R. 48416, 48447, col. 3,
1050 Off. Gaz. Pat. Office 385, 416. In 1984 the rules were amended to require the
particularized explanation of material in non-self authenticating documents. The
commentary explained that “[B]y providing in the rules that documentary evidence must be
explained, the PTO hopes to save both
parties and the Board considerable difficulty in presenting and evaluating evidence.”
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