Appeal No. 97-2466 Page 20
Application No. 08/461,943
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
the appellant, the Board of Patent Appeals and Interferences
is also not under any such burden.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 8, 9, 11, 12, 17, and 18 under 35 U.S.C. § 103 is
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