Appeal No. 2002-0076 Page 5
Application No. 09/144,842
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 appellant alleges, "[t]he claims on appeal do not stand or fall
together and are believed to be separately patentable," (Appeal Br. at 5), he fails to
satisfy the second requirement. His pointing out differences in what claims 2-4, 12, and
13 cover, (id. at 14, Reply Br. at 7), is not an argument as to why the claims are
separately patentable. Therefore, claims 2-4, 12, and 13 stand or fall with
representative claim 1.
With this representation in mind, rather than reiterate the positions of the
examiner or the appellant in toto, we address the four points of contention
therebetween in the following order:
• omission of Ford
• additions of Ford
• problems solved by the appellant
• motivation to combine.
Omission of Ford
The examiner finds, "Ford discloses . . . a base unit (150) having . . . a
speaker (182). . . ." (Final Rejection at 2.) The appellant argues, "[a]lthough Ford
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