Ex parte PUSKORIUS et al. - Page 12




          Appeal No. 99-0717                                        Page 12           
          Application No. 08/597,095                                                  


               37 C.F.R. § 1.192(a), as amended at 62 Fed. Reg. 53131                 
          (Oct. 10, 1997), effective Dec. 1, 1997, was controlling when               
          the appeal brief was filed.  Section 1.192(a) stated 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, unless good cause is shown.                             

          Also at the time of the brief, 37 C.F.R. § 1.192(c)(8)(iv)                  
          stated as follows.                                                          
               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                           
               reference may not properly be combined with features                   
               disclosed in another reference.  A general argument                    
               that all the limitations are not described in a                        
               single reference does not satisfy the requirements                     
               of this paragraph.                                                     










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