Appeal No. 2001-2692 Page 6
Application No. 08/789,001
C.F.R. §1.192(c)(7) (2001)). "Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately patentable." 37 C.F.R.
§ 1.192(c)(7) (2002). "If the brief fails to meet either requirement, the Board is free to
select a single claim from each group of claims subject to a common ground of rejection
as representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.
Here, although the appellants allege "that pending claims 1-38 are patentably
distinct from one another," (Appeal Br. at 16), they fail to satisfy the second
requirement. More specifically, their pointing out differences in what claims 1, 4-27, and
31-35 cover, (id. at 28-43), is not an argument that the claims are separately
patentable. Therefore, claims 4-27 and 31-35 stand or fall with representative claim 1.
With this representation in mind, rather than reiterate the positions of the
examiner or the appellants in toto, we address the four points of contention
therebetween. First, the examiner quotes "[c]ol. 6, lines 31-39" of Modarres.
(Examiner's Answer at 14.) Observing that "[c]laim 1 is an independent apparatus
claim limited to the combination of three (3) elements," (Appeal Br. at 28), the
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