Interference No. 102,572
as well as to explain the witness’ relationship to the document in question. In addition,
authenticity of an exhibit must be established both as to subject matter (content) and time.
Rivise & Caesar, Vol IV, § 563, page 2418.
21
Documents do not speak for themselves. They must be explained even if they contain a
22
label and a date. Further, 37 C.F.R. § 1.671(f) requires a witness to explain the entries
on the various pages of the notebooks/exhibits. This explanation provides the opponent
21 Amoss v. McKinley, 195 USPQ 452, 453-454 (Bd. Pat. Int. 1977). The extent to
which an exhibit is explained depends on the simplicity or complexity of the subject matter
as well as technical background of tribunal hearing the case. Rivise and Caesar Vol. III, §
435, page 1891. Herein, because of the complexity and the terminology used in the
biotechnical arena, it is most imperative that a witness’ 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 in order for the Board to make a proper analysis of the
record. 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).
22C.F.R. § 1.671(f) states that “[T[he significance of documentary and other exhibits
shall be discussed with particularity by a witness during oral deposition or in an affidavit.”
See Notice of Final Rule at 48447, col. 3, 1050 Off. Gaz. Pat. Office at 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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