Appeal No. 2000-0526
Application No. 08/818,958
10 apart from claim 2 or claim 3. Therefore, claim 10 shall2
stand or fall with representative claim 2 in deciding the
appeal of rejection (1) and with representative claim 3 in
deciding the appeal of rejection (6) (see In re Young, 927
F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978)).
For the reasons discussed, infra, in the new ground of
rejection of method claims 2, 3, 9 and 10 under the second
paragraph of 35 U.S.C. § 112 pursuant to 37 CFR § 1.196(b), we
have determined that claims 2, 3, 9 and 10 are indefinite. We
recognize the inconsistency implicit in our holding that these
claims are rejectable under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the
invention with our holding, infra, that these claims are
unpatentable under 35 U.S.C. § 102 or 103 or under the
judicially created doctrine of obviousness-type double
patenting. Normally, when substantial confusion exists as to
the interpretation of a claim and no reasonably definite
Merely pointing out differences in what the claims cover is not an2
argument as to why the claims are separately patentable. 37 CFR §
1.192(c)(7).
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