Can new evidence be submitted in an Appeal Brief?

In the context of the appeal process within patent examination, an Appeal Brief must adhere to specific protocols regarding the evidence that can be included. The correct understanding is that only previously presented materials are allowed in the Appeal Brief. This restriction ensures that the appeal focuses on the record developed during the prosecution of the application, thus maintaining procedural integrity and fairness.

The rationale behind this rule is to provide the Patent Trial and Appeal Board (PTAB) with a clear understanding of the issues as they were previously considered, without introducing new evidence that could require additional examination or consideration. This approach prevents any potential prejudice against either party, ensuring that the appeal is based solely on the established record.

The idea that new evidence might support claims or could be submitted during oral arguments does not align with the procedural framework established for appeals. Instead, any arguments and positions taken in the Appeal Brief must rely entirely on the information and evidence that were part of the original prosecution history, preserving the fairness and efficiency of the appeal process.