Appeal No. 2000-1362
Application 08/914,165
referred to as "Br__") and reply brief (Paper No. 17) (pages
referred to as "RBr__") for a statement of appellants' arguments
thereagainst.
OPINION
Grouping of claims
The examiner states that appellants' arguments why the
claims are separately patentable do not comply with the Manual of
Patenting Examining Procedure § 1206(7) because appellants merely
state differences in what the claims cover (EA2-3).
Appellants argue that the brief identifies specific
limitations in the rejected claim which are not present in any
other group of claims, provides an argument that such limitations
are not described in the prior art relied on in the rejection,
and provides an explanation of how such limitations render the
claimed subject matter unobvious over the prior art (RBr2).
Accordingly, it is argued, these reasons fully explain why the
different groups are separately patentable (RBr2).
We agree with appellants that the brief fully complies with
the requirements of 37 CFR § 1.192(c)(8) to argue the separate
patentability of the claims. The examiner's statement is clearly
erroneous. Nevertheless, although the examiner states that the
claims are not separately argued, which would normally justify
considering only the broadest claim, the rejection addresses all
of the claims. Therefore, the case need not be remanded.
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