Appeal No. 2006-2745 Page 8
Application No. 09/966,119
Third, the invention must in fact satisfy the long-felt need. In re
Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
On this record, appellants’ fail to provide objective evidence demonstrating that
the alleged “long-felt need” was persistent and recognized by those of ordinary
skill in the art. Appellants’ failed to demonstrate that the alleged “long-felt need”
was not satisfied by another before the date of appellants’ invention[ ]3, or that
appellants’ invention, in fact satisfied the alleged long-felt need in the art.
Instead of providing objective evidence supporting their assertions, appellants
satisfy themselves with the arguments of counsel. We note, however, 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). Accordingly, we
are not persuaded by appellants’ arguments concerning “long-felt need.”
On reflection, we find no error in the examiner’s prima facie case of
obviousness. Accordingly, we affirm the rejection of claim 28 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Hardie and Kent. As
discussed supra claim 8 falls together with claim 28.
3 In this regard, we note the examiner’s reference to Weissbart. Answer, page 8. While the
examiner asserts (id.) that this document is a United States Patent, the examiner fails to identify
the Patent No. or make this reference of record in the case. Accordingly, we have not considered
this document. In addition, we recognize the examiner’s reference to a database search using
the keywords “rheumatoid arthritis or ra and treat?. . .. with the near30 describer . . . .” While we
are confident that a number of documents may contain these “terms” within 30 words of each
other, it is unclear on this record if any of these documents are relevant to the invention before us
on review. In the event of further prosecution, we encourage the examiner to identify relevant
evidence that supports his position and make this evidence of record.
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