Appeal No. 97-1890
Application 08/338,707
Examiner’s reasoning for combining Francisco and Kapp is
improper. Appellants have argued that the references do not
meet the Appellants invention. As stated by our reviewing
court in In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991), “[i]t 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.” 37 CFR § 1.192(a)as amended at 60 Fed.
Reg. 14518, March 17, 1995, which was controlling at the time
of Appellants filing the brief, states as follows:
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief may be refused
consideration by the Board of Patent Appeals and
Interferences.
Also, 37 CFR § 1.192(c)(8)(iv) states:
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. If the
rejection is based upon a combination of references,
the argument shall explain why the references, taken
as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one
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