Ex Parte KIM - Page 3




          Appeal No. 2001-0865                                                        
          Application 08/998,781                                                      

          Wakabayashi et al. (Wakabayashi) 5,537,517      July 16, 1996               
               Claims 1-5, 7-17, and 20 stand rejected under 35 U.S.C.                
          § 103(a) as being unpatentable over Zimmerman and Saruwatari.               
               Claims 6, 18, and 19 stand rejected under 35 U.S.C. § 103(a)           
          as being unpatentable over Zimmerman and Saruwatari as applied in           
          the rejection of claim 5, further in view of Wakabayashi.                   
               We refer to the final rejection (Paper No. 11) and the                 
          examiner's answer (Paper No. 19) (pages referred to as "EA__")              
          for a statement of the examiner's rejection, and to the brief               
          (Paper No. 18) (pages referred to as "Br__") and reply brief                
          (Paper No. 21) (pages referred to as "RBr__") for a statement of            
          appellant's arguments thereagainst.                                         
                                       OPINION                                        
          Grouping of claims                                                          
               It is argued that none of the claims stand or fall together.           
          However, only claims which are separately argued are entitled to            
          be treated separately.  See 37 CFR § 1.192(c)(8)(iii) (1998)                
          (argument section of brief must specify the errors in the                   
          rejection and the specific limitations in the claims which are              
          not described in the prior art).                                            
               Appellant argues (Br8-11) that Zimmerman fails to teach or             
          suggest at least the following three features set forth in                  
          independent claims 1, 3, 5, 7, and 13 (the limitations of claim 1           
          are quoted as representative):  (1) "performing a print                     

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