Appeal 2007-0393 Reexamination Control 90/006,786 Patent 6,497,843 1 as to where the contact with the assay strip is made, whether on the front 2 side of the backing or on the backside, would not have been expected to 3 significantly affect the process. The process of Claim 1 would have been 4 obvious from the subject matter of Claims 4 and 6 of the 620 patent. 5 Patentee argues that as a result of the difference in the contact location 6 “the spread and migration of the urine sample is more continuous, consistent 7 and uniform.” Br. 23. Patentee has not provided any evidence to support 8 this argument. Counsel's argument cannot take the place of evidence lacking 9 in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595, 44 10 USPQ2d 1610, 1615 (Fed. Cir. 1997); In re Greenfield, 571 F.2d 1185, 11 1189, 197 USPQ 227, 230 (CCPA 1978). Nor has Patentee directed us to a 12 portion of the Specification indicating that there is any difference in 13 operation due to the location where the wicking means and the assay strip 14 come into contact. 15 Patentee also argues that the language “wicking means” does not 16 implicate 35 U.S.C. § 112, ¶ 6. We do not reach the issue since. Giving 17 Claims 4 and 6 the interpretation asserted by Patentee we have concluded 18 that the subject matter of Claim 1 would have been obvious to a person 19 having ordinary skill in the art. 20 With respect to Claims 2-4 and 6-12, Patentee relies only on the 21 reasons asserted as to Claim 1 to demonstrate error in the examiner’s 22 decision. Claims 2-4 and 6-12 therefore stand with Claim 1. 23 Conclusion of Law 24 Patentee has failed to show the examiner erred in deciding that the 25 subject matter of Claims 1-4 and 6-12 is patentably indistinct from the 26 subject matter of Claims 4 and 6 of the 620 patent. - 9 -Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
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