Appeal No. 1998-0299
Application No. 08/301,523
overall multilayer structure. (Col. 5, ll. 14 to 18). Thus, prior to irradiation the
multilayered film of Oberle is the same as claim 15. Furthermore, it is well settled
that arguments of counsel cannot take the place of evidence in the record. In re
Schulze, 346 F. 2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Here, Appellants
have not provided evidence showing that the multilayered film of Oberle is different
from the claimed film.
With respect to claim 31, Appellants state: [w]ith regard to claims expressly
identifying watering, e.g. claims 31 ff, the process by which made [sic, the product is
made] is indeed important. A water-saturated tube performs differently from one not
watered.” (Reply Brief, paragraph bridging pages 5 and 6). It is well settled that
when a claimed product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the Applicants to prove that the prior art
product does not necessarily or inherently possess characteristics attributed to the
claimed product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the
present case, Oberle describes a multilayered film which comprises the same layers
as the invention of claim 31. Appellants have not
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