Appeal No. 1997-1654 Page 5
Application No. 08/431,307
49-51. We are persuaded, however, that the examiner erred in
rejecting claims 30, 40, and 48. Accordingly, we affirm-in-
part. Our opinion addresses the grouping and obviousness of
the claims.
Grouping of the Claims
37 C.F.R. § 1.192(c)(7), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and ...
appellant explains why the claims of the group 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.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
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