Ex parte ISHIUCHI et al. - Page 7

               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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