Appeal No. 97-1656 Page 13
Application No. 08/314,26
For each rejection under 35 U.S.C. 102, the argument
shall specify the errors in the rejection and why
the rejected claims are patentable under 35 U.S.C.
102, including any specific limitations in the
rejected claims which are not described in the prior
art relied upon in the rejection.
At the same time, 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
the appellant, this board is also not under any such burden.
Therefore, we affirm the rejection of claims 1 and 2 under 35
U.S.C. § 102(e).
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