Appeal No. 2004-1930 Page 6
Application No. 08/940,544
Id. at 5. Appellants also argue “the scope of enablement which the examiner
states is provided by the reference far exceeds the scope of enablement which
the examiner originally acknowledged for this application.” Id. at 6.
We initially note that there is no rejection for lack of enablement before us,
and thus that argument is not relevant to the issues presented for appeal.
Moreover, while appellants argue that the Eshhar reference is not enabling, they
provide no evidence to that effect. Arguments of counsel cannot take the place
of evidence in the record. See in re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 302 (CCPA 1974); In re DeBlauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984). Moreover, with respect to the argument that Eshhar does not
provide an enabling disclosure, appellants do not argue or provide evidence that
the nucleotide sequence of the CD28 protein was not known to the ordinary
artisan, nor do they argue that the ordinary artisan would not know how to
produce a CD28 fusion protein. Rather, they argue that the examiner has
provided no indication of similarities between CD28 and CD16, but appellants
have not set forth reasons as to why the similarity or lack of similarity of CD28
and CD16 would affect the production of a polynucleotide encoding a CD28
containing fusion protein. Therefore, we do not accept appellants’ arguments
that the Eshhar reference does enable the ordinary artisan to make the fusion
protein encoded by the polynucleotide of claim 1.
Appellants also argue that in order for a reference to be anticipatory, it
must provide a written description of the claimed invention. See Appeal Brief,
page 6. According to appellants, “[o]nly by requiring that the reference also
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