Appeal No. 97-1647 Page 22
Application No. 08/321,255
function of this court to examine the claims in greater detail
than argued by an appellant, looking for nonobvious
distinctions over the prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991).
37 C.F.R. § 1.192(a), as amended at 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
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