Appeal 2007-2517
Application 10/311,196
In sum, the record lacks evidence to support Appellants’ position.
Counsel’s argument cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1610,
1615 (Fed. Cir. 1997). Because the Examiner has set forth a reasonable
doubt as to why an explicit utility has not been disclosed as of the filing
date, the burden shifted to Appellants to provide rebuttal evidence. See In re
Brana, 51 F.3d 1560, 1567, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995).
Outside of argument of counsel, Appellants’ have supplied no objective
evidence that the only reasonable interpretation of the data in Table 2 is that
the SEQ ID NO: 2 has taste-specific receptor activity.
Post-filing evidence
Appellants’ provide Li – published subsequent to the filing of the
instant application – which they state confirms the asserted utility of SEQ ID
NO: 2 as a human taste-specific receptor (Br. 8). Appellants’ contend that
“[a]s is well appreciated, post-filing evidence may be used to substantiate an
asserted utility” (Br. 8), but provide no authority upon which this assertion is
based.
It is true that post-filing evidence can be relied on for certain
purposes. A later dated publication can be used as evidence of the level of
ordinary skill in the art at the time of the application, as evidence that the
disclosed device would have been operative, and of the state of the art
existing on the filing date of an application. See Gould v. Quigg, 822 F.2d
1074, 1078, 3 USPQ2d 1302, 1305 (Fed. Cir. 1987); In re Hogan, 559 F.2d
595, 605, 194 USPQ 527, 537 (CCPA 1977). However, post-filing evidence
can not be used to demonstrate that the Specification, as filed, sets forth a
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