Patent owner gets re-hearing at PTAB but still loses in Reexamination 95/001,775
The Patent Owner requests reconsideration (hereinafter "Rehearing Request" or "Reh'g Req.") under 37 C.F.R. § 41.79 of our Decision mailed March 26, 2015 (hereinafter "Original Decision") affirming the Examiner's final rejections of the appealed claims 1, 2 and 19–22.
We grant the Rehearing Request to the extent that we consider the Patent Owner's arguments infra, and further explain the Original Decision. However, we deny the request to modify the Original Decision.
Of argument A
More importantly, regardless of what the Trafixigns ’732 statement may mean, the Patent Owner overlooks the actual basis for affirming the rejection, which is that Wehmeyer explicitly discloses installation of plates in freshly poured (or hardened) concrete, and also specifically discloses wetset installation with the lugs attached to the plates (Original Decision 6–7; Wehmeyer, col. 2, ll. 36–44, col. 8, ll. 17–21).
Of argument D (and attorney argument):
However, the Patent Owner merely provides attorney argument to support its assertion. Attorney argument is no substitute for such evidence. Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005); In re Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not take the place of evidence in the record."); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). The Patent Owner also ignores the disclosure in Szekely that its tile has a thickness of 0.100 inch (Szekely, col. 5, l. 45), which is much closer to 0.0598 inch said to allow for tile removal than to 0.312 inch said to preclude tile removal. Thus, as stated in the Original Decision: the limited evidence of record as to this issue, which is the ’491 patent itself, specifically teaches that wet-set tactile warning surface units having a flange with a hole therein are removable and replaceable, contrary to the assertion now made by the Patent Owner in this appeal. (