Appeal No. 2001-1918
Application No. 09/096,999
We refer to the Final Rejection (Paper No. 5) and the Examiner’s Answer (Paper
No. 15) for a statement of the examiner’s position and to the Brief2 (Paper No. 14) for
appellant’s position with respect to the claims which stand rejected.
OPINION
Appellant submits that, for purposes of the instant appeal, claims 1-16 stand or
fall together.3 Accordingly, we select instant claim 1 as representative of the invention.
See 37 CFR § 1.192(c)(7).
Appellant refers to a “combined 132 and 131 Declaration with exhibits” filed on
August 24, 1999. (Brief at 7.) Appellant contends that the paper shows that applicant’s
invention predated that of Blocher. (Id.)
37 CFR § 1.131 provides in pertinent part:
(a)(1) When any claim of an application or a patent under reexamination is
rejected under 35 U.S.C. 102(a) or (e), or 35 U.S.C. 103 based on a U.S.
patent to another or others which is prior art under 35 U.S.C. 102(a) or (e)
and which substantially shows or describes but does not claim the same
patentable invention, as defined in § 1.601(n), or on reference to a foreign
patent or to a printed publication, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination, or the party
qualified under § § 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to overcome the patent or publication....
2 Appellant filed an earlier brief (Paper No. 12) that was denied entry for lack of compliance with
37 CFR § 1.192(c). See Notification of Non-compliance (Paper No. 13).
3 To the extent that the grouping of claims statement (Brief at 6) may be viewed as submitting
separate patentability for two groups of claims, we note that appellant does not provide separate
arguments for independent claim 1 and independent claim 8.
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