Opinion
Appeal No. 77-634.
January 27, 1978.
LeRoy T. Rahn, Christie, Parker Hale, Pasadena, Cal., for appellant.
Solicitor, U.S. Patent and Trademark Office, Washington, D.C., for Patent Office.
ORDER
Having considered appellant's MOTION TO SUPPLEMENT RECORD and affidavit attached thereto, OPPOSITION TO APPELLANT'S "MOTION TO SUPPLEMENT RECORD" by the Commissioner of Patents and Trademarks, and appellant's REPLY thereto —
The court finds: (1) The entire article, entitled "Cavitational Tendencies of Control Valves for Paper Pulp Surface," is of record in the application of the parent (as Appendix F to appellant's brief to the board of appeals involving the parent application) of the present application on appeal. (2) In the present application, only the first page of such article was physically inserted into the record as an attachment to appellant's brief to the board of appeals. (3) Appellant specifically requested that the board consider the entire file of the parent application in reaching its decision and referenced drawing figures of the subject article not appearing on the first page of the article. (4) The Solicitor admits that the article was not considered by either the examiner or the board in arriving at a decision and was not mentioned by the board in either its original decision or its decision on reconsideration.
The court concludes that the entire article is part of "the evidence produced before the Patent and Trademark Office." 35 U.S.C. § 144. The statute ( 35 U.S.C. § 144) contains no requirement that such evidence be contained in a single application file; moreover, the fact that the board did not actually consider the article or mention it is immaterial since evidence need not be physically introduced and also considered by a Patent and Trademark Office tribunal to be considered "evidence produced before the Patent and Trademark Office." Cf. Morgenstern v. Burton, 86 F.2d 341, 24 CCPA 734, 31 USPQ 377 (1936). The entire article is of record in appellant's parent application, which is in the possession of the Patent and Trademark Office, and appellant requested that such article be considered in arriving at a decision on his present application. Finally, the board did not, pursuant to 37 CFR 1.195, question appellant's inclusion of the first page of the article in his brief or his request that the entire file of his parent application be considered.
It is, therefore, ordered that the motion be granted. Appellant may supplement the record in this appeal by adding thereto the entire article entitled "Cavitational Tendencies of Control Valves for Paper Pulp Surface."