Appeal No. 1996-4124
Application No. 08/307,088
(March 17, 1995), which was controlling at the time of
Appellant’s filing the brief, states:
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.
On page 14 of the brief, Appellant states that claim 29
"contains features which [sic, are] substantially commensurate
in scope with the corresponding features of claim 28." Thus,
Appellant has not argued that claim 29 is separately
patentable from claim 28. Accordingly, for the rejection
under 35 U.S.C. § 103 based upon Hahn and Loehrke, we will
group claims 20, 21, 26, 28 and 29 together, with claim 28 as
the representative claim of the group.
Turning to the rejections based upon 35 U.S.C. § 103, it
is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
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