BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE FRANCIS P. MC CULLOUGH JR. AND ALVIN F. BEALE JR. Appeal No. 87-0948

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 87-0948

April 22, 1988



 Application for Patent filed December 4, 1984, Serial No. 678,186, which is a Continuation of Serial No. 558,239, filed December 5, 1983. Secondary Electrical Energy Storage Device and Electrode Therefor.



Virginia Solis et al. for Appellants



Primary Examiner--Brian E. Hearn



Examiner--S.J. Kalafut



Before Winters, Goolkasian, and W. Smith
















 Appellants request reconsideration of our decision mailed December 17, 1987, wherein we affirmed the examiner's rejection of all the appealed claims under 35 USC 103 as unpatentable over the teachings of Singer and Bennion.



 Having reviewed the arguments set forth in appellants' request, we find no point of law or fact which we overlooked or misapprehended in our original disposition of the case. Essentially, the request amounts to a reargument of points already considered by the Board. With respect to this reargument, we adhere to our original decision for the reasons stated in our opinion.



 Again, we point out that the 'RECAP OF AN INTERVIEW AT WHICH ELECTRODES AND BATTERIES OF THE PRIOR ART AND THE PRESENT INVENTION WERE DEMONSTRATED' summarizes the presentation of an oral argument before the examiner. We have treated the 'recap' as just that, i.e., argument. The summary of an oral argument made before the examiner and attached to appellants' Brief on appeal is not evidence in the record. Nor can it be converted to evidence or bootstraped to have evidentiary status by characterizing the demonstration as 'a showing in the nature of an affidavit' or 'the equivalent of an affidavit'. See the Request for Reconsideration, page 9. As often stated by the CCPA, argument of counsel cannot take the place of evidence lacking in the record. In re Scarbrough, 500 F.2d 312, 182 USPQ 298 (CCPA 1974) and cases cited therein.



 Our concurring colleague is convinced that the demonstration conducted at the interview constitutes evidence in the administrative record. We disagree. At the interview, the examiner merely observed and witnessed the results of comparative testing involving different batteries or laboratory cells. Absent from the record is any evidence, by way of affidavit, declaration, or otherwise, showing exactly what electrodes and batteries were compared. Consider the hypothetical case where, at an interview, applicant shows unexpectedly superior properties possessed by blue crystals taken from container 'A' compared with red crystals from container 'B'. The examiner witnesses the results of this comparative testing, e.g., by visual observation. However, neither a label placed on containers 'A' and 'B' nor a representation made to the examiner concerning their content would serve to establish the composition of the blue and red crystals. By the same token, appellants here have not introduced facts which serve to establish the composition of the electrodes used at the interview in comparative testing of batteries and laboratory cells. If called to testify, the examiner could not say exactly what electrodes and batteries were tested. The examiner could only say what electrodes and batteries he was told were tested.



  *2 Nor does the 'recap' of the interview constitute evidence in the administrative record. In this regard, we note that the 'recap' is not in the form of an affidavit or declaration filed under Rule 132. Being unsworn, the 'recap' stands on the same footing as the unsworn 'Exhibit' discussed in In re Mehta, 347 F.2d 859, 146 USPQ 284, 289-90 (CCPA 1965), i.e., 'it can be taken merely as argument and not to establish facts'.



 We have carefully reviewed each point set forth in appellants' Request for Reconsideration, but we decline to modify our original decision in any respect. The request is, accordingly, denied.









Sherman D. Winters






William F. Smith








John T. Goolkasian






 I concur fully with the majority opinion regarding the patentability of the claims over the references of record. However, the majority has gone too far in labelling as 'argument' appellants' experimental demonstration before the examiner and his written recapitulation thereof in the Brief. In my opinion, appellants' experimentation before the examiner constitutes 'real' evidence of the type which has been sanctioned for years in the courts of the United States and in the Patent and Trademark Office. [FN1]



 Wigmore's Treatise on the Anglo-American System of Evidence, indicates there are three types of evidence; Circumstantial Evidence, Testimonial Evidence, and 'Real' Evidence (Section 1150). Wigmore calls 'Real' evidence 'Autoptic Proference' and indicates quite clearly that 'Autoptic Proference' is always proper, unless specific reasons of policy apply. (Section 1150) Indeed, Wigmore indicates that in patent infringement suits, the judge usually inspects the articles produced in court and may even allow machines to be produced and operated. By Wigmore's standard, demonstrations constitute evidence in the sense that evidence includes 'all modes other than argument . . ., by which a party may lay before the tribunal that which will produce persuasion'. (Section 1150).



 Corpus Juris Secundum is in accord and states quite clearly that Real Evidence, i.e. evidence by inspection, is evidence addressed directly to the senses of the court and/or jury and is 'generally considered to be a very satisfactory or convincing class of evidence'.



 In addition to the general desirability afforded 'Real Evidence' in the courts, the Patent and Trademark Office has established policies which permit the use of demonstrations and exhibits during an interview. See MPEP 713.08. The rules require counsel to provide a complete written statement as to the substance of the interview (MPEP 713.04). Counsel has complied with the Office procedures. The 'recap' of the experiments, submitted with the Brief, is virtually a verbatim copy of the document filed by appellant during prosecution to make of record the substance of the interview. The examiner has reviewed the document and has not disputed what occurred at the interview.



  *3 In my opinion, appellant has proffered 'Real Evidence' to the examiner and this Board and has done so in compliance with Patent and Trademark Office rules which permit such evidence to be made of record. The majority's treatment of such evidence as mere 'argument' is clearly erroneous.



 I have reviewed the evidence submitted in the 'recap' and remain unpersuaded of patentability for the subject matter claimed. It must be remembered that in our original decision, we indicated that appellants had not argued specifically the subject matter of any of the dependent claims. Accordingly, the dependent claims fell with claim 1. Claim 1, by virtue of appellants' use the term, 'comprising', embraces both patentable and unpatentable subject matter. More specifically, claim 1 covers an electrically conductive cabonaceous material having the characteristics set forth therein in the form of a negative electrode coated with lithium. [FN2] Accordingly, appellants' experimental data, though impressive in some aspects, is simply not persuasive of patentability when considered along with the evidence of obviousness and the breadth of subject matter claimed.



 Appellants' demonstration, which employs graphite electrodes having no lithium thereon, is not commensurate in scope with the claimed subject matter. Further, appellant has not compared his material against the closest prior art, positive electrode, which, in this case, is the Reinforced Pyrolytic Graphite (RPG) electrode disclosed by Bennion.



 At page 22, of Appellants' Brief, there is an indication that appellants showed the examiner the plates of the cell described in Example 1 of the present invention and that these plates had been operated for over 2,800 cycles and, as visually observable, showed no signs of degradation of dimension change, swelling or stiffening. This is impressive considering Bennion's tests were limited to less than 50 cycles and showed significant swelling of the PRG electrode (Example 7). Nevertheless, the evidence does not present a side-by-side comparison because there is no indication of how Bennion's RPG electrode would have performed under the tests conditions of Exhample 1 herein, e.g., charge time, charge voltage, discharge voltage and current used in the charging process.



 I must remind appellants, however, that even if one were to persuasively prove that the differences in cycling conditions between the cell of Examples 7 through 9 of Bennion and the cell demonstrated to the examiner were insufficient to have been responsible for the very great difference in performance, the evidence would still not be commensurate in scope with the subject matter claimed which covers negative electrodes coated with lithium as well as electrodes in which lithium is not used as a coating.



FN1. See In re Allen, 166 F.2d 184, 76 USPQ 609, 610 (CCPA 1948) wherein the court permitted a comparison demonstration to be made at the hearing, and Ex parte Wintor, 77 USPQ 24 (Bd.App. 1948) wherein the Board considered an experiment conducted at the hearing to be evidence of such nature that it precluded the necessity of submitting a corroborating affidavit to the examiner for his consideration.


FN2. Appellants have admitted that use of Singer's graphite material as a negative electrode 'would be obvious to o


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