Appeal No. 97-3144
Application No. 08/372,390
Admittedly, a reference must be sufficiently enabling to
practice appellant’s claimed invention in order to serve as
valid prior art under 35 U.S.C. § 102(b). See In re Paulsen,
30 F.3d 1475, 1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 781,
227 USPQ 773, 778 (Fed. Cir. 1985), among others. It also is
well established patent law that appellant bears the burden of
introducing evidence that the applied reference (in this
instance, Pedrick) lacks an enabling disclosure. See In re
Fracalossi, 681 F.2d 792, 793, 215 USPQ 569, 570 (CCPA 1982).
No such evidence has been presented in this case.
Instead, only arguments have been made in support of
appellant’s position as set forth in the briefs. Arguments of
counsel, however, cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974).
Furthermore, expressions of opinion by appellant’s counsel,
such as those set forth in appellant’s briefs, are not
considered to be dispositive of the enablement issue. See In
re Reynaud, 331 F.2d 625, 627, 141 USPQ 515, 518 (CCPA 1964).
For these reasons alone, appellant’s non-enablement argument
must fail.
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