Appeal No. 1996-2481 Page 21
Application No. 07/828763
rejected claims which are not described in the prior
art relied upon in the rejection.
Also simultaneously, 37 C.F.R. § 1.192(c)(8)(iv) stated as
follows.
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.
In summary, section 1.192 provides that as the court is not
under any burden to raise or consider issues not argued by the
appellants, the Board of Patent Appeals and Interferences is
also not under any such burden.
CONCLUSION
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