Appeal No. 1999-1818 Page 7
Application No. 08/586,806
and points to illustrations of "biting-in portions" 12 in Figures 11 to 13, we do not find therein
a clear definition of the term "biting in portions" as suggested on page 2 of the appellants' reply
brief. Accordingly, in the absence of an express definition which differs from the ordinary
usage of "biting," we interpret "biting in portions" to be portions of the rod body material
which cut or migrate into the steel material of the ball, such that there is not a smooth and clear
interface line between the aluminum alloy material and the steel ball material. Further, in light
of this interpretation, the examiner's stated position (answer, page 6) that such biting in portions
would inherently result from the melting, mixing and re-crystallization of the rod body and ball
materials which occurs during the Macura resistance welding process strikes us as reasonable.
Thus, in our opinion, the examiner has discharged the initial burden of providing sound
reasoning to support the determination that the allegedly inherent characteristic (biting-in
portions) logically flows from the teachings of the applied prior art so as to shift the burden to
the appellants to prove that the push rod of Macura does not possess the biting in portions of
the claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). The
appellants, in merely arguing that the welding process of Macura will not result in biting in
portions, have fallen far short of meeting this burden.4
4An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405,
181 USPQ 641, 646 (CCPA 1974).
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