Appeal No. 2004-0522
Application No. 09/678,045
Treatment of claims on appeal
At the outset, it is important to recognize that appellants
chose to argue in their brief certain claims on appeal relative
to applied prior art and to simply state the content of other
claims. This practice on the part of appellants, of course,
clearly indicated to this panel of the Board that appellants had
decided to specifically contest the rejection of certain claims
(those claims specifically argued relative to the teachings of
applied prior art) and not others. Of course, during review of a
contested prior art rejection on appeal, this panel of the Board
needs both the perspective of the examiner and appellants as to
the patentability of each claim vis-a-vis applied prior art to
evaluate the merits of the rejection thereof. When appellants
decided not to present arguments as to why the content of certain
claims is patentable over applied prior art, this panel of the
Board fairly and reasonably concluded that these certain claims
stand or fall from respective claims which appellants did decide
to specifically argue. Our determination as to the status of
those claims that appellants chose not to specifically argue
relative to applied prior art is entirely appropriate on the
facts of this case, and consistent with the practice of holding
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