Appeal No. 2004-0581
Application No. 09/041,105
In light of the foregoing, it is our determination that the
examiner has successfully shifted to the appellants the burden of
proving that Yoshioka’s Figure 6B device does not actually
possess the functional characteristics required by appealed
independent claim 1. Though couched in terms of obviousness
considerations, arguments are presented by the appellants’
attorney in the brief and reply brief to the effect that
patentee’s device would not be capable of performing the here
claimed function. However, these arguments are proffered without
evidentiary support. Further, these arguments do not include any
explanation which reconciles the alleged functional incapability
of the prior art device with the undisputed structural identity
between the Yoshioka and claim 1 devices. For these reasons, we
consider the arguments under consideration to possess little if
any probative value. Concerning this matter, it is important to
bear in mind that mere attorney arguments cannot take the place
of factual evidence. See In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972).
In light of the forgoing, it is our ultimate determination
that the examiner has established a prima facie case of
unpatentability in relation to appealed claim 1 which the
appellants have failed to successfully rebut with argument and/or
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