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):
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007