Appeal No. 97-0032
Application No. 08/095,295
Any arguments or authorities not included in the brief will
be refused consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Additionally, 37 CFR § 1.192(c)(8) provides that the brief shall
contain
The contentions of appellant with respect to each of the
issues presented for review in paragraph (c)(6) of this
section, and the basis therefor, with citations of the
authorities, statutes, and parts of the record relied on.
. . .
(iv) For each rejection under 35 U.S.C. 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the rejected claims
which are not described in the prior art relied on in the
rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art. If the
rejection is based upon a combination of references, the
argument shall explain why the references, taken as a whole,
do not suggest the claimed subject matter, and shall
include, as may be appropriate, an explanation of why
features disclosed in one reference may not properly be
combined with features disclosed in another reference. A
general argument that all the limitations are not described
in a single reference does not satisfy the requirements of
this paragraph.
Thus, notwithstanding the mandates of the sixth paragraph of
35 U.S.C. § 112, under our rules of practice, it was incumbent
upon the appellants to provide an argument in the brief if they
believed that the examiner did not appropriately construe claim
33 under the sixth paragraph of 35 U.S.C. § 112 in applying the
prior art under 35 U.S.C. § 103. Since the appellants did not
raise the issue of equivalence in their brief, I believe it is
3737
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