Appeal No. 96-1614
Application No. 08/236,660
not specifically argued the limitations of each of the claims.
The extent of appellants’ arguments, with respect to the
claims within each rejection, appears in the brief as a
statement of what is recited in each of the claims along with
a bald assertion that the prior art does not teach or suggest
the features of these claims with no analysis or discussion of
obviousness whatsoever. Simply pointing out what a claim
requires with no attempt to point out how the claims
patentably distinguish over the prior art does not amount to a
separate argument for patentability. See In re Nielson, 816
F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). At the
time appellants’ brief was filed, 37 C.F.R. § 1.192(c)(7)
required that the argument explain “why the claims...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.” Appellants’
arguments fail to satisfy this requirement as a basis to have
the claims considered separately for patentability. Since
appellants are considered to have made no separate arguments
for patentability, all claims within each separate rejection
will stand or fall together. Note In re King, 801 F.2d 1324,
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