Appeal No. 1998-0138
Application 08/381,809
new limitation is not identically set forth in the specification, then the examiner must determine whether
the limitation was actually described but in different language. The examiner’s conclusory statement in
the Answer does not provide any explanation or basis for finding that the limitation is not implicitly
present in the specification. This is part of the examiner’s initial burden. Accordingly, we reverse the
rejection of claims 5 and 16 for failure to
provide a written description for the limitation “wherein said palladium compound a) exhibits
substantially no hydrosilylation catalytic activity.” 3
The rejection of claims 5-7, 13 and 16-19 under 35 U.S.C. § 103(a)
The examiner has rejected claims 5-7, 13 and 16-19 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi. It is clear from the examiner’s submissions that for the purpose of the
prior art rejection the examiner treated the claims as not including the limitation that the palladium
compound exhibits substantially no hydrosilylation catalytic activity. However, the invention of the
claims before us includes this limitation. The examiner concedes that if the limitation is considered, the
claims “would be allowable over the cited art.” Reply Brief, p. 3. Since the limitation is part of the
claims, we reverse the rejection under 35 U.S.C. § 103(a).
33In this regard it should be noted that we are not holding that the questioned limitation is supported by a
written description. Rather, we hold only that the examiner has not met his burden of proving that it was not
supported. While applicants refer to certain portions of the specification and argue that one skilled in the art would
recognize that the palladium compounds in the specification must lack catalytic activity (Brief pp. 9-12), applicants
have not provided any evidence as how a person skilled in the art would understand the statements in the
specification. We are given only the arguments of counsel. Arguments of counsel can not take the place of
evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir.
1997); Knorr v. Pearson, 617 F.2d 1368, 1373, 213 USPQ 196, 200 (CCPA 1982); In re Langer, 503 F.2d 1380, 1395, 183
USPQ 288, 299 (CCPA 1974).
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