Appeal No. 2002-0897
Application 09/303,020
The appellants argue that each of Doan’s claims requires an
HF dip (reply brief, page 3). This argument is not well taken
because Doan’s disclosure is not limited to the claims. Instead,
all of Doan’s disclosures must be evaluated for what they would
have fairly suggested to one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
The appellants argue that one of ordinary skill in the art
would not have used Roy’s brush scrubbing in Doan’s method
because the benefits of brush scrubbing do not clearly outweigh
the disadvantages of adding a new and different process step
(reply brief, page 4). This argument is unpersuasive because it
is not supported by evidence. Arguments of counsel cannot take
the place of evidence. See In re De Blauwe, 736 F.2d 699, 705,
222 USPQ 191, 196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303,
315, 203 USPQ 245, 256 (CCPA 1979); In re Greenfield, 571 F.2d
1185, 1189, 197 USPQ 227, 230 (CCPA 1978); In re Pearson, 494
F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974). Moreover, the
appellants have not established that benefits of a process step
must clearly outweigh its disadvantages for a prima facie case of
obviousness of a method including that step to be established.
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