Appeal No. 1999-2264
Application No. 08/549,074
178 USPQ 470, 474 (CCPA 1973).
In the present case, assuming arguendo that the examiner met
the initial burden, appellants had the burden of presenting
evidence, e.g., in the form of affidavits under 37 CFR § 1.132 or
prior patents, to rebut the examiner’s conclusion by showing that
one skilled in the art would have known how to make and use the
claimed invention. See M.P.E.P. § 2164.05 (Feb. 2000). This
appellants did not do, but merely argued as discussed above; such
argument cannot take the place of evidence, In re Wiseman, 596
F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979), and normally
would be insufficient to overcome the rejection. Here, however,
considering the nature of the deficiency in appellants’
disclosure, we note that there is evidence in the record in the
form of Iwata Pat. No. 5,014,062. This patent discloses a fixed,
hollow piston rod 1 with a piston 5 at its center and a cylinder
4 slidably mounted thereon. It further discloses bores 9, 9'
through the wall of the piston rod so that fluid from the piston
rod can pass to the interior of the cylinder to cause it to move
back and forth (col. 2, lines 47 to 54). We further note that
Iwata was applied in the first Office action (Paper No. 5), the
examiner pointing out its disclosure of bores 9, 9'. In our
view, the Iwata patent constitutes sufficient evidence that, as
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