Appeal 2007-1707
Application 10/335,597
not function as a bone plate nor do they present evidence which describes
the requirements of a bone plate (Reply Br. 5), distinguishing it from
Nelson’s sock retainer.
Neither we nor the Examiner are in a position to conclude that the
properties which characterize Nelson’s sock retainer (e.g., its materials and
dimensions) would make it unsuitable as a bone plate. Appellants had the
opportunity to offer evidence and arguments that Nelson’s sock device
cannot be used as a bone plate and would not be recognized as such, but
provide only conclusory statements2 which we find insufficient to overcome
the prima facie case of anticipation.
Appellants have not met their burden of rebutting the Examiner’s
prima facie case of anticipation, thus, we affirm the rejection of claim 1.
Claims 2, 3, and 6 fall with claim 1 because they were not argued separately.
In reaching this decision, we are not ignoring or failing to treat the phrase
“bone plate” as a claim limitation; we are just not persuaded by the evidence
before us that Nelson’s device could not perform this function.
2 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, 1615 (Fed. Cir. 1997).
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013