Appeal No. 2002-1395 Page 8
Application No. 08/789,702
§ 1.192(c)(7). "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 1-51 are patentably
distinct from one another," (Appeal Br. at 20), they fail to satisfy the second requirement
for claims 4-28 and 32-51. More specifically, their pointing out differences in what
claims these claims cover, (id. at 31-50), is not an argument that the claims are
separately patentable. Therefore, claims 4-28 and 32-51 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 five points of contention
therebetween. First, the examiner asserts, "Kirsch discloses macros [col. 1, line 66 to
col. 2, line 38; col. 3, line 20 to col. 4, line 50. Note the example of a macro [col. 4] for
a decoder. . . ." (Examiner's Answer at 16.) The appellants argue, "[n]one of the prior
art even suggests a 'template behavioral description'. None certainly combines this with
'instantiating a template call in the behavioral description'." (Appeal Br. at 29.)
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