Appeal No.96-2575
Application 08/051,886
reaction with a silicon-nitrogen compound followed by
mechanical comminution. In our view, the Kratel references
would have provided no teaching or suggestion of modifying the
process of McDaniel for forming an inorganic xerogel.
Inasmuch as the applied prior art fails to establish a
prima facie case of obviousness, it is unnecessary to evaluate
the probative value of the Domszy declaration.
One final point remains. Appellants at page 5 of their
principal brief, urge separate patentability for ten different
groups of claims (A-J) and provide appropriate arguments in
the body of the brief. As a result, the examiner erred in not
agreeing with appellants that the appealed claims do not stand
or fall together because "the claims would not be separately
patentable if claims 1 and/or 10 were unpatentable. Further,
the same combination of references is applied against every
claim on appeal herein." (page 2 of answer). When an
appellant provides separate arguments for different claims on
appeal, it is the examiner's burden to treat every separately
argued claim and provide factual support for a rejection under
35 U.S.C. § 103, whether or not the same combination of
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