Ex parte EICHLER et al. - Page 4




                 Appeal No. 1996-3367                                                                                     Page 4                        
                 Application No. 08/480,554                                                                                                             

                          Appellants state that the claims do not stand or fall                                                                         
                 together and furnishes the following groups:                                                                                           
                 I) claims 1, 3, 4, 5, 9 and 10; II) claim 2; III) claim 6; IV)                                                                         
                 claim 7; and V) claim 8  (brief, page 4).  Appellants have2                                                                                            
                 only furnished separate substantive arguments for claims that                                                                          
                 are members of separate groupings of claims as identified by                                                                           
                 appellants, not for any separate claims that are members of                                                                            
                 the same grouping.  We therefore limit our discussion to one                                                                           
                 claim in each group identified by appellant, i.e., claims 1,                                                                           
                 2, 6, 7 and 8.  See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37                                                                           
                 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)                                                                           
                 and (c)(8)(1995).                                                                                                                      


                                        Rejection of Claims 1, 3, 4, 5, 9 and 10                                                                        
                          As correctly noted by the examiner (answer, pages 3 and                                                                       
                 4), Böttger discloses and exemplifies a method of preparing                                                                            
                 1,2-dichloroethane by reacting ethylene with chlorine in the                                                                           
                 presence of a catalyst including iron chloride and sodium                                                                              


                          2Since claim 13 depends from claim 8 (Group V) and                                                                            
                 appellants have not identified a separate grouping of claims                                                                           
                 to which claim 13 belongs, we consider claim 13 as a member of                                                                         
                 appellants' Group V claims for purposes of this appeal.                                                                                







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