Ex parte GARCIA et al. - Page 4




          Appeal No. 96-0587                                                           
          Application 07/927,543                                                       

          that the rejected claims stand or fall together unless a                     
          statement is included that the rejected claims do not stand or               
          fall together, and in the appropriate part or parts of the                   
          argument under subparagraph (c)(6) appellant presents reasons as             
          to why appellant considers the rejected claims to be separately              
          patentable" (emphasis added)).                                               
               We address only the limitations argued in appellants' brief.            
          Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391,                          
          21 USPQ2d 1281, 1285 (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 nonobvious distinctions over the prior             
          art."); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661                
          (CCPA 1979) (arguments must first be presented to the Board                  
          before they can be argued on appeal).                                        
               "Anticipation is established only when a single prior art               
          reference discloses, expressly or under principles of inherency,             
          each and every element of a claimed invention."  RCA Corp. v.                
          Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,                     
          221 USPQ 385, 388 (Fed. Cir. 1984).                                          
               Appellants argue that Sriram does not disclose the step of              
          "choosing a satisficing solution to satisfy all of said                      
          constraints" as recited in claim 1 or "selecting a satisficing               
          solution to satisfy all said constraints" as recited in claim 27.            
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