Appeal No. 97-1656 Page 4
Application No. 08/314,26
anticipates the invention of claims 1-2 but not the invention
of claims 3-6. Further, it is our view that the evidence
relied on and the level of skill in the art would not have
suggested to one of ordinary skill in the art the invention of
claims 3-6. Accordingly, we affirm-in-part. Our opinion
discusses the grouping of all the claims, the definiteness of
claims 1 and 2, the anticipation of claims 1 and 2, and the
novelty and nonobviousness of claims 3 through 6 seriatim.
Grouping of All 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, in the
argument under paragraph (c)(8) of this section,
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.
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