Appeal No. 2001-1866 Page 2
Application No. 08/478,606
(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, rather than arguing the patentability of claim 25, the appellants assert,
"[i]ndependent claim[] . . . 25 recite[s] similar features" (Appeal Br. at 6), to those of
independent claim 3. Although they point out differences in what "certain," unspecified
dependent claims cover, (id. at 8), this is not an argument why the claims are
separately patentable. Therefore, claims 4-15 and 25-38 stand or fall with
representative claim 3, and claims 17-24 stand or fall with representative claim 16.
With this representation in mind, we address the following rejections:
• rejection of claims 3-15 and 25-38 under § 103(a)
• rejections of claims 16-24 under 35 U.S.C. § 112, ¶¶ 1 and 2.
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