Appeal No. 95-4823
Application 07/856,012
Group 3 consisting of claims 17 and 19. As required by the then existing provisions of 37
CFR § 1.192(c)(5), appellants presented arguments directed to each separate group of
claims. See pages 7-17 of the Appeal Brief for arguments directed to the claims of Group
1, and pages 17-18 of the Appeal Brief for arguments directed to the claims of Groups 2
and 3.
In response, the examiner stated at page 2 of the Examiner’s Answer that
appellants’ statement that the claims do not stand or fall together is "not agreed with
because all the claims can be rejected over the combination of the relied upon
references." The examiner’s statement falls from its own weight. Taking the examiner’s
statement at face value, it means that anytime an examiner’s rejection includes more than
one claim, an appellant is estopped from separately arguing the patentability of the claims
included in that rejection. This flies in the face of the rule.
The examiner’s failure to separately consider the patentability of the three groups of
claims delineated by appellants in the Appeal Brief constitutes error.
2. Statement of the Rejection.
In view of its brevity, we reproduce the statement of the rejection as it appears at
page 4 of the Examiner’s Answer as follows:
Kastner teaches the use of the claimed type diazepine derivatives for the
treatment of intraocular pressure. Pino Capote teaches the effect of topical
and intravenous diazepam on reducing intraocular pressure.
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