Thursday, October 11, 2012

"Argument in the brief" gets no traction in Ex parte Little

Things do not go well for Appellant when text such as the following appears:

We begin our analysis by observing at the outset that Appellants respond to the Examiner’s final rejection of representative claim 1 by presenting arguments that have no citation or other reference to specific supporting evidence of record. (See arguments for Group 1 consisting of claims 1, 3-6, 8, 11-14, 19, 21, and 22; App. Br. 6-11). Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
We decline to examine the claims sua sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”).


Appellants, who did not file a Reply Brief, have not addressed this reasoning of the Examiner by pointing to specific contravening evidence in the record, let alone demonstrated error by the Examiner, as required to satisfy their burden on appeal with respect to this ground of rejection. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).


Appellants do not provide any arguments traversing the Examiner’s
rejection of dependent claim 10. Therefore, we consider these arguments waived. On this record, we summarily sustain the Examiner’s rejection of claim 31. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection. . . . [T]he Board may treat any argument with respect to that ground of rejection as waived.”).

Ex parte Little


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