Attorney assertion of no predictability fails in Medoff case

Appellants lose on obviousness in Ex parte MARSHALL MEDOFF .

Attorney argument fails



Appellants argue that it is not predictable that lignocellulosic material
will behave the same way as cellulosic material described in the IAEA
reference. However, “[a]ttorney’s argument in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d at 1405. Appellants provide no
evidence to support the argument that it is not predictable that
lignocellulosic material will behave the same way as cellulosic material
described in the IAEA reference.


Merck is cited


Appellants further argue that “none of the reports in the IAEA
reference discuss irradiation followed by enzymatic treatment which is in
contrast to the instant claims.” (App. Br. 4.) However, Appellants err in
attacking the references individually, as the rejection is based on a
combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The references cannot be read in isolation, but for
what they teach in combination with the prior art as a whole. See id. The
Examiner indicates on page 17 of the record, that it is Medoff that teaches
the claimed order of steps, and that IAEA is relied on solely to support
thatapplication of electron beam radiation to cellulose containing material
results in reduction of the degree of cellulose polymerization, thus reducing
the recalcitrance of the lignocellulosic feedstock.




And, yes, KSR predictability is invoked:


“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).