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.
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