Much of the argument presented by Morrison is in the form of
argument by counsel. An argument of counsel, however, cannot
take the place of evidence in the record. Estee Lauder, Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir.
1997). Nevertheless, we proceed with an analysis of the
arguments made by counsel, none of which we find particularly
persuasive.
a.
According to counsel, "The evidence shows that Morrison and
his Assignee, Pennzoil, were deliberative in their research and
in the Morrison patent to ensure that the work was thorough and
represented useful knowledge to the public" (Paper 48, page 34).
Counsel also states that the Morrison patent "is a well written
patent application replete with real data and information on the
esters involved in the lubrication and replete with exemplary
data showing the results of research" (Paper 48, page 34).5
Counsel goes on to state that the background portion of the
Morrison patent shows "that careful consideration was given to
5 We need not decide whether the Morrison specification was, or is, "well
written." We will note, however, that there may be errors in the specification.
For example, we have not been able to reconcile Test 475-119-2 (Ex 2018) with
Formulation A in Table 1 in column 8 of the patent. In the test, a composition
having:
57.84% Priolube 3999
32.00% Emery 2911 and
10.16% OLOA 340R
is said to have a viscosity at 100°C of 7.32 and a -25° Brookfield of 3510,
whereas the data in Table 1 with respect to Formulation A reports no viscosity
and a -25° Brookfield of 3160.
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