Appeal No. 2002-0500 Page 5
Application No. 09/258,320
Claims 1, 10, 14, 15, 18, 19, 32, 33, 36, and 37
At the outset, we recall that claims that are not argued separately stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
(citing In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). When the
patentability of a dependent claim is not argued separately, in particular, the claim
stands or falls with the claim from which it depends. In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986) (citing In re Sernaker, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983); In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70
(CCPA 1979)). Furthermore, "[m]erely 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).
Here, the appellants argue claims 1, 14, 15, 18, and 19 together. (Appeal Br.
at 5-7, 10.) Rather than arguing the patentability of claim 10, they assert, "[c]laim 10
distinguishes over the combination of references for the same reasons as discussed
above with respect to independent claim 1." (Id. at 10.) Rather than arguing the
patentability of claims 32, 36 and 37, the appellants further assert, "[c]laims 32, 36 and
37 further distinguish over the references cited above for the reasons as discussed with
respect to claim 1." (Id.) Rather than arguing the patentability of claim 33, they assert,
"[c]laim[] 33 . . . patentably distinguish[es] over the various prior art references
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