dissenting.
The majority takes away this patent applicant’s fundamental right to a “civil action to obtain [a] patent” as granted by Congress in 35 U.S.C. § 145. Today the majority decides that a patent applicant may not introduce the inventor’s declaration in a § 145 proceeding before the district court because the inventor had an “affirmative duty” or “obligation” to disclose this evidence to the PTO. His failure to fulfill his affirmative duty, by not disclosing evidence he could have disclosed to the PTO, results in such evidence being excluded from the district court § 145 proceeding. The district court made no fact findings indicating willful withholding or intentional suppression; in fact, the district court did not even conclude that Mr. Hyatt’s conduct amounted to gross negligence, but rather excluded the evidence under a negligence “could have” standard. Nor did the PTO even argue, at any stage of these proceedings, that Mr. Hyatt’s conduct in this case was willful or intentional. Nonetheless, the majority concludes that the applicant “owed,” Maj. Op. at 1278, the PTO all evidence he possesses that is responsive to a rejection and that failure to fulfill this newly created “affirmative duty” amounts to willful withholding as a matter of law. There are only two possible ways to interpret the majority’s willful withholding determination. Either the majority is engaging in appellate fact finding or it is determining that breach of its newly created affirmative duty is willful withholding as a matter of law. The latter leaves no room for fact finding in individual cases and takes the discretion completely away from the trial court. Ultimately, the majority’s sweeping exclusionary' rule is far broader than anything argued by the parties.
While the Supreme Court has characterized the § 145 action as a proceeding that is “in fact, and necessarily, a part of the application for the patent,” the hallmark of the § 145 proceeding in the district court is that “all competent evidence” shall be heard subject only to “the ordinary course of equity practice and procedure.” Gandy v. Marble, 122 U.S. 432, 439, 7 S.Ct. 1290, 30 L.Ed. 1223 (1887); see also Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61, 5 S.Ct. 25, 28 L.Ed. 656 (1884). To be clear, Mr. Hyatt does not argue that § 145 actions are de novo trials that are entirely separate from PTO proceedings. Mr. Hyatt argues only that new evidence may be admitted in a § 145 action. He acknowledges that deferential review (substantial evidence) is given to Board fact *1280findings absent new evidence in § 145 proceedings and also that evidence pertaining to new issues cannot be introduced. See Appellant’s Br. 1/5, 8, 10-11, 14-15; see also Conservolite, Inc. v. Widmayer, 21 F.3d 1098 (Fed.Cir.1994) (holding that in a § 146 action, evidence pertaining to new issues that were not raised before the PTO may be excluded).
The majority’s decision to affirm the district court’s exclusion of the inventor’s own declaration in a § 145 civil action severely restricts the rights that Congress afforded patent, applicants, making this proceeding more of an appeal than the new civil action contemplated and enacted by Congress. Moreover, by concluding that an inventor has an “affirmative duty” to submit his own declaration in response to a rejection by the PTO, lest he be prevented from admitting the material in any subsequent district court proceeding, the majority makes it impossible for inventors to ever testify in a § 145 action unless their testimony had first been proffered to the PTO. I cannot agree that this was what Congress contemplated when it enacted § 145, and therefore I dissent.
I. Mr. Hyatt’s Declaration Should Not Be Excluded
Congress enacted a statute that permitted a “civil action” and gave patent applicants the right to present new evidence in a trial in the district court despite that this right would allow the applicant to introduce “evidence that they could have brought in before” the PTO, potentially resulting in “dragging an opponent through a second time.” To Amend Section 52 of Judicial Code and Other Statutes Affecting Procedure in Patent Office: Hearings on H.R. 6252 and H.R. 7087 Before the H. Comm, on Patents, 69th Cong., 1st Sess. 80-81 (1926) (statement of Hon. Thomas E. Robertson, Commissioner of Patents) [hereinafter To Amend Section 52]. Congress granted patent applicants the right to a civil action in the district court distinct from their right of appeal. It is our obligation to protect the distinction Congress codified in § 145, not to reweigh the virtues of that decision. The § 145 proceeding is a civil action and ought to be governed by the same Federal Rules of Evidence that govern other civil actions. Patent cases do not need, nor should they have, special rules of evidence.
Section 145, titled “Civil action to obtain a patent,” provides:
An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
35 U.S.C. § 145 (emphasis added).
The statute itself distinguishes the appeal that may be brought pursuant to 35 U.S.C. § 141 because a § 145 action is not an appeal; it is a “civil action.” The statute obligates the district court to adjudicate the facts in this civil action. Because the statute affords no limitations on the type of evidence that ought to be admissible in a civil action brought under § 145, the standard Federal Rules of Evidence *1281that govern all civil actions ought to govern. The legislative histories of § 145 and its predecessor statute, section 4915 of the Revised Statutes, repeatedly and without contradiction indicate that the intent of Congress was to permit a patent applicant to bring a new suit built upon a new record. In testimony leading to the Patent Act of 1927, the Commissioner of Patents referred to a section 4915 suit as one where an applicant would proceed “de novo ” in district court, with the right “to build up a new record” and bring in “further evidence that I might have put in before and drag you through another trail [sic] court.” To Amend Section 52, at 79-80. The Commissioner of Patents was testifying in opposition to this statute, to this civil action in the district court. He testified that this statute that permits this “new record” results in “dragging an opponent through a second time.” Id. at 80. In fact, he articulated these concerns a second time, noting that the statute allowed a patent applicant to “file testimony bringing in evidence that they could have brought in before [the PTO] but did not bring in before, and after dragging a man through all this procedure which you have just said is so complicated and burdensome, start de novo in court, and bring in testimony not taken the first time.” Id. at 81; see also id. at 76 (statement of Karl Fenning, Former Assistant Commissioner of Patents) (arguing that “the best thing to do would be to cut out 4915 entirely for ex parte applications” to encourage the applicant to “put in all the testimony pertinent to his ease” before the PTO).
Despite being presented with the policy reasons for not permitting a civil action, which allows the applicant to bring in evidence he could have brought before the PTO, Congress decided to adopt this approach. Mr. A.C. Paul, Chairman of the Patent Section of the Legislation Committee of the American Bar Association, made clear that he too understood section 4915 to permit the introduction of new evidence:
While our committee would have the case start de novo after the decision of the board ... and the difference would be then if we went to the court of appeals by an appeal the decision must be based upon the same record. If we go into a court of equity the parties may use the record that they have in the Patent Office and may supplement it by additional evidence.
Id. at 81. Similarly, Congressman Albert H. Vestal stated that “if a party feels aggrieved, he can bring his suit in the equity court, but it is not an appeal. It is the bringing of a new suit.” Id. at 36.1 Charles E. Howson, Chairman of the Committee on Patent Law Revision for the American Bar Association, who was the “chairman of the committee that drew these bills” explained:
The advantage of section 4915 is that it enables the party in interest, desiring to obtain a patent, to take evidence in a court or tribunal whose business it is to try issues of facts and make wp a record in addition to that he has been enabled to furnish the examiners in the Patent Office, and therefore get before a court of competent jurisdiction everything connected with his rights and every fact connected with his patent; in other words, have before him everything that *1282courts in the country have before them in infringement cases.
Id. at 21 (emphasis added); see also To Amend the Statutes of the United States as to Procedure in the Patent Office and the Courts: Hearing Before the S. Comm, on Patents, 69th Cong., 2d Sess. 13-14 (1926) (statement of Otto R. Barnett) (Pursuant to section 4915, you may file an action in the district court if - “you want a new record to bring out new things developed in your patent, in lieu of that you may file a new suit.... Now, when it came to ex parte cases, it was comparatively simple to say that the individual inventor may appeal, or he may start his new suit.... ‘Well, somebody may want to start a new suit and bring out other and new things.’ So we said, ‘All right, take your choice; go on with a new suit, or appeal.’ ”).
These numerous statements confirm that when Congress enacted this statute, which does not limit the evidence that may be introduced in this “new suit” or “civil action,” Congress did so with this purpose and intent. The majority attempts to sweep away all of the legislative history (as “anachronistic”) claiming that the mere existence of Barrett “suggests that Congress approved of the cases holding that patent applicants could not present to a district court evidence they should have but did not present to the Patent Office.” Maj. Op. at 1271-73. There are several problems with this theory. First, the parties agree and Congress clearly stated that the 1952 patent act made no substantive changes to § 4915. See Appellant’s Br. 16; Appellee’s Br. 45; S.Rep. No. 82-1979 (1952), as reprinted in 1952 U.S.C.C.A.N. 2394, 2400. Second, even the few courts that excluded evidence prior to the 1952 patent act did so under a hodgepodge of different standards (diligence, intentional suppression or bad faith). Congress could not have implicitly adopted all of these differing standards. Indeed, Congress did not limit the type of evidence that the patent applicant may introduce precisely because it intended for a civil action under § 4915, now § 145, to be based upon a new record and new evidence, even if that new evidence could have been brought before the PTO. Congress intended that the district court in a § 145 action have everything that a court would have in an infringement suit. Under this standard, Congress certainly intended for an inventor, such as Mr. Hyatt, to be permitted to introduce his own declaration in a § 145 action.2
Moreover, to deter applicants from exactly the type of procedural gaming that concerns the majority, § 145 imposes on the applicant the heavy economic burden of paying “[a]ll the expenses of the proceedings.” 35 U.S.C. § 145. This burden encourages applicants to present their best case to the PTO to avoid responsibility for all expenses in a § 145 proceeding. To allow this type of evidence in these civil actions was a policy decision committed solely to the discretion of Congress, which it duly made.
Not only does the majority decision conflict with the proper interpretation of § 145, but it is also in conflict with Supreme Court jurisprudence on this point. The Supreme Court has repeatedly and without limitation spoken to an applicant’s right to “present to the court evidence that the applicant did not present to the PTO. *1283The presence of such new or different evidence makes a factfinder of the district judge.” Dickinson v. Zurko, 527 U.S. 150, 164, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999). Supreme Court jurisprudence reflects a strong distinction between a § 141 appeal, in which new evidence is not permitted, and a § 145 action and its precursors, in which new evidence is freely admitted. A civil action under § 145 — like the bill in equity before it and unlike an appeal — is “the exercise of original, the other of appellate, jurisdiction.” In re Hien, 166 U.S. 432, 438, 17 S.Ct. 624, 41 L.Ed. 1066 (1897). A defining difference between an appeal and the bill in equity is the introduction of new evidence:
It is evident that alternative rights of review are accorded an applicant, — one by appeal to the United States Court of Customs and Patent Appeals, the other by bill in equity filed in one of the federal district courts. In the first the hearing is summary and solely on the record made in the Patent Office; in the other a formal trial is afforded on proof which may include evidence not presented in the Patent Office.
Hoover Co. v. Coe, 325 U.S. 79, 83, 65 S.Ct. 955, 89 L.Ed. 1488 (1945) (citation omitted); id. at 87, 65 S.Ct. 955 (explaining that the legislative history makes clear that Congress intended to save to “litigants the option of producing new evidence in court, by retaining the equity procedure”); see also Hill v. Wooster, 132 U.S. 693, 697, 10 S.Ct. 228, 33 L.Ed. 502 (1890) (“The opinion of the circuit court discusses ... and states that considerable evidence was produced before the court which was not before the patent-office.”). And the Supreme Court has distinguished an appeal from the bill in equity under section 4915 (the precursor to § 145):
It is thereby provided [in section 4915] that the applicant may have remedy by bill in equity. This means a proceeding in a court of the United States having original equity jurisdiction under the patent laws, according to the ordinary course of equity practice and procedure. It is not a technical appeal from the patent-office, like that authorized in section 4911, confined to the case as made in the record of that office, but is prepared and heard upon all competent evidence adduced, and upon the whole merits. Such has been the uniform and correct practice in the circuit courts. Whipple v. Miner, 15 F. 117 (C.C.D.Mass.1883); Ex parte Squire, 3 Ban. & A. 133; Butler v. Shaw, 21 F. 321.
Butterworth, 112 U.S. at 61, 5 S.Ct. 25 (emphasis added).
In Butterworth, the Supreme Court held that a section 4915 action should be heard on “all competent evidence,” which is governed “according to the ordinary course of equity practice and procedure.” Id. The majority explains that competent evidence is synonymous with admissible evidence, see Maj. Op. at 1260 n. 12, but suggests that the Supreme Court was silent on what evidence was competent (admissible). In fact, the preceding sentence in Butter-worth explained that the admissibility or competence is determined “according to the ordinary course of equity practice and procedure” (i.e. the Federal Rules of Evidence and Civil Procedure). Butterworth, 112 U.S. at 61, 5 S.Ct. 25. Evidence is admissible in a § 145 civil action limited only by the ordinary rules of evidence and procedure that apply to all civil actions. The majority claims that reading Butter-worth as holding that evidence is admissible in a § 145 civil action limited only by the ordinary rules of evidence and procedure that apply to all civil actions is contrary to the Supreme Court’s decision in Gandy. However, the very quote in Gandy that the majority cites for this proposition, Maj. Op. at 1260, reaffirms this holding of Butterworth. The fact that the *1284“proceeding, is, in fact and necessarily, a part of the application for the patent,” is not to the contrary. The cases endorsed by the Supreme Court in Butterworth, like the Supreme Court itself, hold that the section 4915 action is one in which any evidence may be admitted:
It would seem, therefore, that the course of proceeding in either case is elear-viz., “according to the course of equity.” Even in the absence of these explicit terms it would be apparent that a suit in equity would have to be governed in its proceedings by equity rules.... The provisions of the acts of congress, already referred to, allowing the party failing in his application, to file a bill, do not restrict the hearing, in this court, to the testimony used before the commissioner. Either party, therefore, is at liberty to introduce additional evidence, or rather, to speak more accurately, the hearing is altogether independent of that before the commissioner, and takes place on such testimony as the parties may see fit to produce agreeably to the rules and practice of a court of equity.
Ex parte Squire, 22 F. Cas. 1015, 1017 (C.C.E.D.Mo.1877) (No. 13,269) (emphasis added).3 This case, which on this very point the Supreme Court held was “correct,” holds that the only limitations on evidence that may be introduced in these proceedings are those limitations that arise under the normal rules — in this case the Federal Rules of Evidence. See id.
The majority discusses the importance of preserving settled expectations. Our own precedent is replete with examples of § 145 actions in which district courts considered new evidence that could have been presented to the PTO but was only first presented to the district court. See, e.g., Fregeau v. Mossinghoff, 776 F.2d 1034, 1036 (Fed.Cir.1985) (applicant submitted a new expert declaration setting forth additional data and a new theory to the district court); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed.Cir.1985) (new expert testified in district court); Gould v. Quigg, 822 F.2d 1074 (Fed.Cir.1987) (both the PTO and the patent applicant offered new expert testimony); Mazzari v. Rogan, 323 F.3d 1000, 1004-05 (Fed.Cir.2003) (allowing a large volume of new evidence offered by the applicants and the PTO including new experts and prior art references); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1346-48 (Fed.Cir.2000) (allowing new evidence of commercial success to be introduced in the district court proceedings); Genentech, Inc. v. Chiron Corp., 220 F.3d 1345, 1351 (Fed.Cir.2000) (permitting four new experts to testify despite the fact that none of them had offered any testimony by declaration, affidavit, or otherwise during proceedings at the PTO). We have repeatedly held that a § 145 applicant is “entitled” to and may “choose” to introduce additional evidence. See Mazzari, 323 F.3d at 1004-05 (“A section 145 review ... affords the applicant an opportunity to present additional evidence or argue the previous evidence afresh,” and “[i]f the parties choose to present additional evidence to the district court ... the district court would make de novo factual findings.”). In *1285Newman v. Quigg, 877 F.2d 1575 (Fed.Cir.1989), we held that the PTO could introduce several new reports, declarations, and affidavits not submitted during the PTO proceedings explaining:
A district court action under 35 U.S.C. § 145 is a de novo determination of patentability. It is not limited to the record before the PTO. Unless a party is prejudiced thereby or due process is denied, expeditious justice is better served by avoiding artificial restrictions on the district court’s authority to resolve all issues reasonably raised in the proceeding.
Id. at 1579 (citation omitted). These cases illustrate the great magnitude of the majority’s departure from decades of practice in which both parties believed such evidence admissible. The majority’s decision to start excluding evidence in § 145 actions is contrary to the statute, legislative history, Supreme Court precedent, and the long-standing practice of considering such evidence in our cases.4
II. The New Alton Rule for Excluding Evidence
After a lengthy discussion of the hodgepodge of standards that were applied in the few regional circuits that had excluded evidence from district court proceedings, the majority affirms the district court’s exclusion of evidence.5 The authority, ac*1286cording to the majority, is In re Alton, 76 F.3d 1168, 1175 (Fed.Cir.1996). The majority holds that by failing to offer his testimony to the PTO, Hyatt has failed to satisfy “an affirmative and specific duty.” Maj. Op. at 1248. In this way, this new affirmative duty for prosecution seems to resemble inequitable conduct, though here the applicant is penalized regardless of their intent. The majority explains: “Hyatt was obligated to respond to the examiner’s written description rejection by In re Alton, 76 F.3d 1168, 1175 (Fed.Cir.1996), by explaining where in the specification support for each of these limitations could be found.” Maj. Op. at 1274.6 The majority continues: “Hyatt was clearly on notice of his obligation to provide evidence or explanation to the examiner to rebut the written description rejections,” Maj. Op. at 1276, and “he was required by law” to provide it. Maj. Op. at 1275. With all due respect to the majority, I do not believe a new “affirmative duty” to disclose is warranted, nor do I believe Hyatt was “required by law” or “obligated” to provide his declaration to the PTO. While Mr. Hyatt may have failed to overcome the rejections or to convince the Board based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty” as the majority alleges.
The majority uses Alton to create an “affirmative duty” with which patent applicants must comply. Alton does not justify this new duty. Alton stands for the proposition that when the examiner makes a prima facie case for his written description rejection, the burden of coming forward with evidence or argument (burden of production) shifts to the applicant. Alton, 76 F.3d at 1175. And, this is true whether the examiner is rejecting a claim on the basis of anticipation, obviousness, enablement, written description or any other reason. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.Cir.1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.”); see also Manual of Patent Examination Procedure § 804 ¶ I.A (8th ed., rev. 2008); id. § 2106 (patentable subject matter), § 2107.02 (utility), § 2112 (inherent anticipation), § 2142 (obviousness), § 2163.04 (written description), § 2164.04 (enablement), § 2184 (equivalents). Once the examiner makes a prima facie case, the applicant then has the burden of coming forward with evidence to rebut that prima facie showing.
*1287Because the same burden shifting occurs with regard to every type of rejection an examiner makes, this new affirmative duty is not limited to the written description issue reviewed in Alton. Hence if the burden shifting creates “an affirmative duty” then this affirmative duty comes into existence every time an examiner makes a prima facie case and rejects claims. I cannot agree with the per se rule that an applicant is deemed to have willfully withheld anything he possessed during prosecution that was responsive to a rejection regardless of the applicant’s actual intent. Willfulness always requires intent and is simply not compatible with the majority’s strict liability approach.
III. Mr. Hyatt’s Evidence
In this case, the district court found that Mr. Hyatt’s failure to proffer his declaration to the PTO was merely negligent. Hyatt v. Dudas, No. 03-0901, 2005 WL 5569663, at *7 (D.D.C. Sept. 30, 2005) {“Hyatt II”) (“Hyatt’s failure to explain why he didn’t submit his declaration earlier is negligent, and the district court need not consider evidence negligently submitted after the end of administrative proceedings.”). There has been no finding of bad faith, fraud, willful withholding, intentional suppression or even gross negligence in this case. The PTO did not argue to either the district court or this court that the facts in this case would establish intentional suppression or willful withholding by Mr. Hyatt. Rather, the PTO argued that the facts established that Mr. Hyatt acted negligently or in the alternative grossly negligently. Appellee’s Br. 51-53. In fact, the PTO argues that Mr. Hyatt’s focus on “intentional or deliberate conduct misses the point.” Appellee’s Br. 51. Analogizing the present case to Schering Corp. v. Marzall, 101 F.Supp. 571 (D.D.C.1951), the PTO distinguishes between suppression on the one hand and evidence withheld without sufficient excuse on the other. Id. at 34-35. If the majority would like the willful withholding standard to be applied and for fact findings to be made accordingly, it must vacate and remand for the district court to do so in the first instance. Because willful withholding was not argued by the parties or considered by the district court, we as an appellate court simply cannot know the volume of evidence that may exist on the issue nor are we in a position to judge Mr. Hyatt’s credibility.
I find troubling the majority’s characterizations of Mr. Hyatt. See, e.g., Maj. Op. at 1275 (Mr. “Hyatt purposefully kept [the Board] in the dark”); id. (his “blatant noncooperation”); id. at 1275 (Mr. “Hyatt willfully refused to provide evidence in his possession”); id. (Hyatt “refused to cooperate”); id. (“Hyatt’s willful non-cooperation”); id. at 1277 (“Hyatt willfully refused”); id. at 1274 (providing his declaration “should have been simple for him”); id. at 1277 (that Hyatt’s failure “to perform a simple task that it was his burden to perform is inexcusable”); id. at 1277 (“Hyatt’s perverse unhelpfulness”). None of this appears in the district court proceedings, the PTO proceedings, or the record-these fact findings ought to be left to the district court which is in the best position to weigh the contradictory evidence.
Contrary to the appellate finding of willful withholding, the record contains ample evidence of a lack of willful withholding. Here, the examiner rejected all of Mr. Hyatt’s 117 claims for lack of written description, failure to enable, obviousness-type double patenting (over 8 separate references), and Schneller-type double patenting (over the same 8 references). The examiner also rejected 9 claims as anticipated {Hill reference) and 7 as obvious (over a combination of three references). Technically, Mr. Hyatt was appealing 45 *1288separate issues totaling 2546 separate rejections of his 117 claims to the Board. He wrote a 129-page appeal brief addressing all of these different rejections.7 And, to be clear, the Board reversed all the examiner’s rejections for obviousness, anticipation, obviousness-type double patenting, Schneller-type double patenting, and many of the written description and enablement rejections. With regard to the written description rejections in particular, the Board reversed the rejections of 38 claims and sustained the rejections of 79 claims. Mr. Hyatt prevailed on 92% of all the examiner’s rejections at the Board level. Despite Mr. Hyatt’s success, the majority declares Mr. Hyatt’s response to be “completely and wholly inadequate” and Mr. Hyatt to have been perversely unhelpful. Maj. Op. at 1277,1278.
With respect to the written description issue, Mr. Hyatt responded to the rejections — as the majority explains' — with thirty six pages of argument and Table-1. While the Board criticizes Table-1, the Board reversed thirty-eight of the examiner’s rejections for lack of written description and in some cases relied upon exactly the information referenced in Table-1. For example, the Board found support for “a data decompressed video image input circuit generating data decompressed image information” (in thirty-three claims) on page 23 of the 236-page specification, the exact and only location where table-1 says the terms “data compressed” and “decompressed” appeared. See, e.g., Ex Parte Hyatt, No. 2000-2049 (B.P.A.I. July 30, 2002) at 19-20. Although Mr. Hyatt may have failed to overcome all of the written description rejections based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty,” and he certainly was not “perversely unhelpful” as the majority alleges. With all of these facts, and no one arguing willful withholding, should we be finding it in the first instance? I believe the court is wrong to hold that breach of the newly created affirmative duty, i.e., not producing evidence to the PTO, is willful withholding as a matter of law.
It is helpful to compare these facts to one of the only examples of willful withholding, where a court excluded evidence of reduction to practice where the assignee corporation expressly refused to disclose and to allow their witnesses to answer questions before the PTO in order to maintain a commercial advantage. Barrett, 22 F.2d at 396 (“[T]he Barrett Company forbade them to answer.”). Barrett represents an extreme and unwarranted position, and the majority chooses to go far beyond even that standard. Mr. Hyatt’s conduct here hardly rises to the level of the Barrett Company. There is no evidence that Mr. Hyatt intentionally withheld information to retain some commercial advantage, as in Barrett. Rather, the majority concludes that where an applicant fails to convince the PTO of his position, he is foreclosed from bringing in new evidence to further that position in a § 145 action, regardless of whether he believed he had submitted adequate evidence to the PTO — i.e., regardless of the applicant’s intent.
In hindsight, perhaps Mr. Hyatt should have submitted his declaration or that of any other expert earlier in the prosecution process. But hindsight is misleadingly acute. Declarations and expert reports are time consuming and expensive to prepare. It is hardly reasonable or even desirable to require patent applicants to put massive declarations into the record at an early stage of prosecution, weighing the *1289cost to both the applicant and the PTO. See generally Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U.L.Rev. 1495 (2003) (arguing that it would be inefficient for the PTO to overinvest in examination because so few patents are enforced). In this case, for example, the examiner rejected the claims on many different bases (double patenting on 8 different references, obviousness, anticipation, enablement, written description, etc.), totaling 2546 separate rejections. The Board overturned nearly all of them. It is easy with the benefit of hindsight to say Mr. Hyatt should have introduced more evidence on written description to the Board. But Mr. Hyatt was not facing merely a written description rejection, he was facing 2546 separate rejections on many, many different bases. The majority implausibly asserts that 2546 separate rejections is “proportional to Hyatt’s prosecution of an application containing 117 pending claims spanning 79 pages.” Maj. Op. at 1278 n. 35. An average of 21 rejections per claim is hardly proportional. Mr. Hyatt was forced to appeal 45 independent issues to the Board when the average is two. Dennis D. Crouch, Understanding the Role of the Board of Patent Appeals in Ex Parte Appeals, 4, available at http://papers.ssrn.com/sol3/papers.cfm? abstract-id=142392295. Despite this challenge, Mr. Hyatt was largely successful on appeal. Further, the length of Mr. Hyatt’s application suggests that his efforts to pinpoint pages containing certain terms was helpful and in good faith. Mr. Hyatt’s response may have been especially valuable in the time before searchable electronic applications.
To say that Mr. Hyatt had an affirmative duty to introduce all evidence to the Board or that he “owed” (Maj. Op. at 1278) all the evidence he possessed is to put an enormous and undesirable burden on the patentee, one that will foreclose patent protection for many small inventors. Congress foresaw exactly this problem and ameliorated it with § 145 by providing applicants a way to initiate a civil action and introduce new evidence after Board proceedings when the issues are much more succinct and consolidated. This is illustrated perfectly here, where the applicant was contending with 2546 rejections on many different bases before the Board. After the Board overturned nearly all of them, only a small number of rejections— based on written description/enablement— were maintained. Hence at the district court the applicant could proffer much more extensive evidence because the universe of issues was greatly narrowed. This is the sensible approach Congress enacted. The statute even places the cost of the proceeding on the party better positioned to know the value of the application — the applicant. The majority’s new exclusionary rule based upon its new affirmative duty upsets this balance.
CONCLUSION
In this ease, the majority blurs the line between an appeal pursuant to § 141 and the civil action of § 145. The admissibility of new evidence is exactly what distinguishes § 145 from § 141. “We must be vigilant to preserve to patent applicants the alternative procedures that the law provides, and to preserve the historical distinction between them.” Fregeau, 776 F.2d at 1041 (Newman, J., coneurring-inpart). The legislative history and Supreme Court precedent make clear that the hallmark distinction is the admissibility of “all competent evidence,” “to build up a new record,” “to start de novo in court,” “and file testimony bringing in evidence that they could have brought in before [the PTO] but did not bring in before.” This evidence, admissible in this civil action, should be governed as the Supreme Court indicated by “equity practice and procedure,” i.e., the Federal Rules of Evidence and Civil Procedure.
*1290Since only the presence of new evidence invokes the de novo standard of review (otherwise the district court will give the Board fact findings substantial evidence deference, see Fregeau, 776 F.2d at 1038), the majority’s decision in this case makes the § 145 action virtually indistinguishable from an appeal under § 141. This version of a “civil action” under § 145 is contrary to Congressional intent and to the Supreme Court’s rulings. While it is sound policy to encourage full disclosure to administrative tribunals such as the PTO, we are not the body that makes the decision of how best to do this. Congress held numerous hearings over this legislation, considered the concerns over permitting a civil action, and decided to enact the legislation despite these concerns.
Mr. Hyatt did not fail to fulfill an affirmative duty or obligation and he should not be penalized. I believe Congress gave Mr. Hyatt the right to have his own declaration considered as part of the evidence in the § 145 civil action at the district court, and therefore I must dissent from the majority’s constriction of this patent applicant’s rights.
. The Federal Rules of Evidence do not support the majority's exclusion of inventor statements. Inventor testimony is regularly admitted in infringement cases for various reasons: Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 866 (Fed.Cir.1993) (written description); Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.Cir.2005) (en banc) (claim construction); Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed.Cir.1998) (reduction to practice); Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1295 (Fed.Cir.2008) (conception).
. See also Butler v. Shaw, 21 F. 321, 326 (C.C.D.Mass.1884) (distinguishing between the patent applicant's right to appeal where “that court acts strictly as a court of appeal in the matter ... the hearing is summary, and is confined to the specific reasons of appeal, and to the evidence produced before the commissioner” and the patent applicant's right to file a “bill in equity” under section 4915, which is "a suit within the ordinary jurisdiction in equity of the courts ... the statute contains no provision requiring the case to be heard upon the evidence produced before the commissioner ... as has been held in this and other circuits, the court may receive new evidence, and has the same powers as in other cases in equity”).
. Although not considered below or raised or argued by the parties on appeal, the majority contends that the APA requires "[s]ome restrictions on the ability of an applicant to introduce new evidence in a § 145 action.” Maj. Op. at 1270. There is little doubt that, as a general matter, the APA applies to PTO actions. Zurko, 527 U.S. at 165, 119 S.Ct. 1816. But Zurko acknowledged that § 145 allows applicants to "present to the court evidence that the applicant did not present to the PTO. The presence of such new or different evidence makes a factfinder of the district judge.” Id. at 164, 119 S.Ct. 1816. And in a case considering the applicability of Zurko to § 145, we stated that "[a] section 145 review is distinct from a section 141 appeal in that it affords the applicant an opportunity to present additional evidence or argue the previous evidence afresh.” Mazzari, 323 F.3d at 1004. While Zurko and Mazzari concerned the standard of review, both cases considered the APA and both cases proceeded on the uncontroversial premise that the applicant can "choose” to present "new or different evidence” in a § 145 action. Further, as explained in detail supra, the language and legislative history of § 145 resoundingly support the admissibility of new evidence in § 145 actions. Cf. Chandlery v. Roudebush, 425 U.S. 840, 862, 96 S.Ct. 1949, 48 L.Ed.2d 416 (1976) (“Here, by contrast, there is a 'specific statutory authorization’ of a district court 'civil action,' which both the plain language of the statute and the legislative history reveal to be a trial de novo.”). The APA does not limit new evidence in a § 145 proceeding to live testimony to resolve credibility issues as the majority asserts. Maj. Op. at 1270-71.
. To the extent that regional circuits or lower courts excluded evidence in § 145 actions, there is considerable disagreement as to the standard that ought to govern the exclusion of such evidence (gross negligence, intentional suppression, bad faith, or negligence/diligence). See, e.g., Case v. CPC Int'l, Inc., 730 F.2d 745, 752 (Fed.Cir.1984) ("We are aware that this provision has received varying interpretations in the circuits. In our view, since an action under 35 U.S.C. § 146 has the hybrid nature of an appeal and a trial de novo, the statute authorizes the district court to accept all proffered testimony on issues raised by the parties during the proceedings below or by the board’s decision.” (emphasis added)). In fact, the negligence/diligence standard applied in this case was recently rejected by the very court from which this appeal comes:
As a threshold matter, the Court must determine whether plaintiff may, under Section 145, offer the four new declarations not previously submitted to the Board.... Defendant contends that the Court should not consider these new declarations because they were not previously submitted to the Board.... There is no indication here that plaintiff's failure to introduce the four declarations rises to the level of fraud, bad faith, or gross negligence.
Defendant, however, points to a handful of cases in this Court, which have adopted *1286an even more stringent standard for the consideration of new evidence. Defendant relies primarily on Hyatt v. Dudas, in which Judge Kennedy declined to consider new evidence "negligently submitted after the end of administrative proceedings.” This articulation of the "new evidence” standard represents a significant departure from the PTO’s guidelines and, as plaintiff argues, would "render an appeal under § 145 ... nearly indistinguishable from a direct appeal to the Federal Circuit, and would render the purpose of the statute duplicative and meaningless.” The Court therefore declines to adopt the Hyatt standard for considering new evidence in this case.
Hitachi Koki Co. v. Dudas, 556 F.Supp.2d 41, 47 (D.D.C.2008) (citations omitted).
. The majority suggests that there is only one way to respond to a written description rejection. Maj. Op. at 1278 ("There is, under Alton only one acceptable response to a written description rejection: showing the examiner where by column and line number in the specification he may find written description support for each disputed claim limitation.”). With all due respect, this not correct. Written description rejections can be addressed by arguing, for example, that the examiner failed to set forth a prima facie case, by amendment, by adjusting a priority claim, or by pointing out common alternative definitions for a claim term known to one of ordinary skill in the art. There is not simply one way an applicant can or must respond, and we should not micromanage prosecution.
. Mr. Hyatt prosecuted his patent application pro se. This is not to suggest that Mr. Hyatt is unsophisticated, as he is an inventor with several patents to his credit and a patent agent.