Ex parte MANICO et al. - Page 11




          Appeal No. 96-1455                                                          
          Application No. 08/218,279                                                  


          3 of the brief that appellants have grouped claims 1-18 and 25              
          as a first group and claims 19-24 as a second group.                        
          Appellants have provided separate arguments for patentability               
          for each group as required.  In accordance with 37 CFR §                    
          1.192(c)(7), which was controlling at the time of appellants'               
          filing of the brief, we consider claims 1-18 and 25 to stand                
          or fall together, with claim 1 being considered the                         
          representative claim.  37 CFR § 1.192(c)(7) (July 1, 1995), as              
          amended at 60 Fed. Reg. 14518 (March 17, 1995), 1173 Off. Gaz.              
          Pat. & Trademark Office 62 (Apr. 11, 1995) states:                          

               Grouping of claims.  For each ground of rejection                      
               which appellant contests and which applies to a                        
               group of two or more claims, the Board shall select                    
               a single claim from the group and shall decide the                     
               appeal as to the ground of rejection on the basis of                   
               that claim alone unless a statement is included that                   
               the claims of the group do not stand or fall                           
               together and, in the argument under paragraph (c)(8)                   
               of this section, appellant explains why the claims                     
               of the group are believed to be separately                             
               patentable. Merely pointing out differences in what                    
               the claims cover is not an argument as to why the                      
               claims are separately patentable.                                      


          It is the burden of the Examiner to establish why one                       
          having ordinary skill in the art would have been led to the                 
          claimed invention by the reasonable teachings or suggestions                
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