Re-hearing in Bonadio
As to attorney argument:
Appellants‟ attorney argument does not persuade us otherwise. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (stating that “arguments of counsel cannot take the place of evidence lacking in the record”) (quoting Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA 1982).
Best is cited in a concurring opinion:
“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). For the foregoing reasons, I am not persuaded by Appellants‟ contention that the evidentiary burden was improperly shifted to Appellants on this record.