Ex parte MARSHALL et al. - Page 12




          Appeal No. 1996-0427                                                        
          Application 08/210,224                                                      



                    For each rejection under 35 U.S.C. § 102,                         
                    the argument shall specify the errors in                          
                    the rejection and why the rejected claims                         
                    are patentable under 35 U.S.C. § 102,                             
                    including any specific limitations in the                         
                    rejected claims which are not described in                        
                    the prior art relied upon in the rejection.                       
          Also, 37 CFR § 1.192(c)(8)(iv) states:                                      
                    For each rejection under 37 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, 37 CFR § 1.192 provides that this board is not under any              
          greater burden than the court which is not under any burden to              
          raise and/or consider issues not argued by Appellants.                      
                   In view of the foregoing, the decision of the                     


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