Appeal 2006-2536
Application 10/611,127
II. CLAIM GROUPING
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).1
Here, claims 1-9 are subject to the same ground of rejection. The
Appellants argue claims 1-6 as a group (Br. 5-6) and claims 7-9 as another
group. (Id. 7.) We select claims 1 and 7 as the sole claims on which to
decide the appeals of the respective groups. With this representation in
mind, rather than reiterate the positions of parties in toto, we focus on the
issues therebetween.
III. AVOIDING LOGIC UNIT THRASHING
The Examiner asserts that "the recitation of its intended use to 'avoid
potential logic unit thrashing' is a mere statement of purpose for said multi-
requestor system." (Answer 8-9.) The Appellants argue, "Without the
preamble, a reader may not be able to realize that the different claimed
1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.
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