Ex parte MONTI et al. - Page 4





              Appeal No. 95-3917                                                                                                                          
              Application 07/861,144                                                                                                                      

              jurisdiction is limited to those matters involving the rejection of claims.  In re Hengehold, 440 F.2d 1395,                                

              1404, 169 USPQ 473, 480 (CCPA 1971).  Nevertheless, the examiner should seriously consider                                                  

              withdrawing the objection for the reasons stated with respect to the rejection of the claims under 35 U.S.C.                                

               112, second paragraph.                                                                                                                    


              Grouping of claims                                                                                                                          

                       The examiner states (Examiner's Answer, page 2):                                                                                   

                                The brief includes a statement that claims 1-22 do not stand or fall together.  While the                                 
                       argument section does provide specific groupings, such groupings have not been argued separately                                   
                       as required.  Therefore, these claims are presumed to stand or fall together.                                                      

              Appellants do not contest this statement in the reply brief and, accordingly, we consider the dependent                                     

              claims to stand or fall together with the independent claims on which they depend.  Appellants list separate                                

              groups of claims (Brief, pages 20-21), but make no attempt to point out the inapplicability of the references.                              

              Cf. In re Beaver, 893 F.2d 329, 330, 13 USPQ2d 1409, 1410 (Fed. Cir. 1989) ("Although concise, the                                          

              arguments pointed out the essential elements as compared with prior claims, and the inapplicability of the                                  

              cited references, which had previously been discussed in the brief.").  It is not our function to make                                      

              appellants' arguments for them.                                                                                                             


              35 U.S.C.  112, second paragraph                                                                                                           

                       The examiner states (Examiner's Answer, page 3):                                                                                   



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