Appeal No. 2007-0080 Page 8 Application No. 09/771,595 which exhibit a wide range of reactivity with alkaline as well as acidic solutions, liquids, and gases. Tanner, column 2, lines 9-17. To address these problems, Tanner describes a surface- treated zinc oxide which shows “unexpected photostability, chemical stability, and physical stability” when used in combination with dibenzoylmethane for skin application. Id., column 2, lines 20-27. It is not apparent from Tanner whether surface treatment would overcome the problems experienced with zinc oxide when utilized in another milieu, i.e., in combination with a cationic polymer for the hair. We further note that Appellants argue in their Brief that inorganic sunscreens would have been considered unsuitable for a hair conditioner because they would have been expected to leave a pigmented residue on the hair which would not have been acceptable. Brief, page 6. Arguments of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 593, 44 USPQ2d 1610 (Fed. Cir. 1997). Because these arguments were unsupported by evidence, we did not consider them in reaching our decision. In sum, we do not find that the Examiner has met her burden in establishing that the skilled worker would have recognized that zinc oxide would be a suitable sunscreen block for hair. To put this in terms of the teaching, suggestion, motivation test4 which has been used by the Federal Circuit to determine obviousness, there is insufficient evidence to establish that the skilled worker would have been motivated with a reasonable expectation of success to have modified Dieing by the addition of a UV filter as taught by Tanner. Accordingly, we reverse the rejection. 4 DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 80 USPQ2d 1641 (Fed. Cir. 2006).Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007