Interference No. 105,313
Tomita v. Godil
cause for submitting additional evidence. Rather, the junior party characterizes James Hunter’s
second declaration as merely evidence which show that the earlier showing is adequate to
demonstrate an actual reduction to practice, different from evidence which add to the earlier
evidence.
According to party Tomita (Response at page 14): “There is no prohibition on the
submission of post-priority declarations and statements that confirm that the earlier showing is
adequate to demonstrate an actual reduction to practice.” Party Tomita cites no authority for that
assertion. The assertion is rejected. A party may not submit evidence without an adequate
explanation of the significance of that evidence, and then provide the explanation in the form of
further testimony after the original showing has been ruled inadequate. The Board’s decision
must be made on the basis of the record that was created and presented by party Tomita for
consideration, the first time. If the evidence in the record is inadequate for whatever reason,
whether or not the inadequacy is in the form of missing explanation, it is too late to submit
further testimony to support a missing explanation, in the absence of a showing of good cause.
The patent judge rules on whether party Tomita’s Rule 608(b) submission constitutes an
adequate showing based on the evidence and explanations included in the submission. It is
misplaced for party Tomita to argue after the ruling that based on some other explanation and
supporting evidence not included in the party’s submission the patent judge came to the wrong
conclusion. The key is the record created and presented by party Tomita in the original Rule
608(b) submission. Whatever party Tomita needs to make its case must be submitted in the
original showing. Additional explanation and evidence in support of that explanation are
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