Ex parte NIEMIO et al. - Page 9




          Appeal No. 96-2741                                                            
          Application 08/227,093                                                        

               At the time appellants' brief was filed, PTO rules                       
          required:  "For each rejection under 35 U.S.C. 103, the                       
          argument shall specify the errors in the rejection and, if                    
          appropriate, the specific limitations in the rejected claims                  
          which are not described in the prior art relied on in the                     
          rejection, and shall explain how such limitations render the                  
          claimed subject matter unobvious over the prior art."  37 CFR                 
          § 1.192(c)(8)(iv).  Because the PTO has a rule requiring                      
          appellants to argue contested limitations we, like our                        
          reviewing court, are not required to look for differences                     
          beyond those which are discussed 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 Wiechert, 370 F.2d 927, 936,                     
          152 USPQ 247, 254 (CCPA 1967) ("This court has uniformly                      
          followed the sound rule that an issue raised below which is                   
          not argued in this court, even if it has been properly brought                
          here by a reason of appeal, is regarded as abandoned and will                 
          not be considered.  It is our function as a court to decide                   

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