Argument of counsel cannot take the place of evidence

The BPAI case of Ex Parte Rhine presents a relatively simple claim which was found to be obvious:

Claim 1 of the ‘652 patent [US 4,910,652 ], recites3:

A time keeping and displaying wrist mountable watch
having a flashlight mounted in the case thereof, said flashlight
comprising
a power supply for supplying electrical power to said
flashlight, said power supply electrically connected to at least
one light source, and
time delay means for automatically extinguishing said
light source after a time delay following the energization of said
light source by the electrical deenergization of said light source.

An issue was whether the Mallory reference, which relates to a time delay shut-off mechanism in a
flashlight, would have been considered by those in the art as relevant prior art along
with Wegner and Brien, which relate to wristwatches with lights?

KSR said yes:

(“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”).

Appellant argued that a wrist watch, being smaller than a flashlight, presented different
issues. This argument did not work:

“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that
those of skill in the art could not have made a smaller version similar to the
mechanism of Mallory to work in a watch.


One finds a reference to Meitzner:

“Argument of counsel cannot take the place of evidence lacking in the record.” Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977).

The issue of analogous art arose.
Comaper Corp. v. Antec, Inc., 596
F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re
Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).

Master Lock is mentioned:

Wyers v. Master Lock Co., App. No. 2009-1412, 2010 WL 2901839, at *4
(Fed. Cir. July 22, 2010). Mallory is directed to the problem of creating an
automatic time-delay shutoff switch that saves battery life, the same problem
said to be solved by Appellant’s claimed watch. Thus, Mallory addresses
the same problem as Appellant’s claimed watch and is analogous art.