Ex parte WHITMAN (2003-1404) Paper 23
Application No. 09/532,230 Page 2
[4] Whitman has grouped the claims into three groups, but actually argues each of the independent
claims, claims 1, 9,15, 17, 22, 28, 36, and 43 separately without providing any unique arguments
for the dependent claims (Paper 10 at 2-8).
We review rejections as they are actually contested. 37 C.F.R. § 1.192(c)(7).
Consequently, we consider the rejection of each independent claim with each dependent claim
standing or falling with its corresponding independent claim. In re Dance, 160 F.3d 1339, 1340
n.2, 48 USPQ2d 1635, 1636 n.2 (Fed. Cir. 1998) (holding dependent claims not argued
separately stand or fall with their respective independent claims).
The rejection
[5] The examiner has rejected (Paper 11) claims 1-48 under 35 U.S.C. 102(e) as anticipated by:
D.E. Bowman et al., "Refining search queries by the suggestion of correlated
terms from prior searches", U.S. 6,006,225, issued 21 December 1999 [Bowman].
[6] The assignee listed on the Bowman patent is Amazon.com.
[7] The Bowman patent issued from the 09/145,360 application.
[8] Whitman expressly incorporated the 09/145,360 application into its specification (Specification,
Paper 1 at 1).
[9] We understand Whitman to contend that its invention is an improvement on Bowman's
invention.
[10] According to the examiner, Bowman teaches all the limitations of claims 1-17 and 22-48
(Paper 11 at 2-7).
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