Appeal No. 96-3395 Page 25
Application No. 08/347,900
37 C.F.R. § 1.192(a), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(a) stated as follows.
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief will be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Also at the time of the brief, 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 just as the court is
not under any burden to raise or consider issues not argued by
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