Appeal No. 1997-0166
Application No. 08/409,933
Appellants state (brief, page 5) that claims 8, 9 and 11-28 do not stand or fall together and that
appellants “have set forth reasons supporting the separate patentability of the claims.”
We note, however, that claims 8, 11-13, 18, 22 and 27 have not been separately argued.
37 CFR § 1.192 (c) (7) (July 1, 1996) as amended at 60 Fed. Reg. 14518 (March 17, 1995), which
was controlling at the time of appellants’ filing of 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.
Accordingly, we will consider appellants’ claims 8, 11-13, 18, 22 and 27 as standing or falling with the
claims from which they depend.
We will affirm the rejection of claims 8, 9, 17-19, and 21-23 under 35 U.S.C. § 103. We will
reverse the rejection of claims 11-16, 20 and 24-28 under 35 U.S.C. § 103.
Turning first to independent claims 17 and 21, we note that the claims are similar in scope, with
claim 21 additionally setting forth that the electrode pad is disposed on a surface of the
semiconductor substrate. Appellants assert (reply brief, page 6) that the references do not disclose or
suggest the electrode pad recited in the claims. It is the examiner’s position (answer, pages 3 and 5)
that figure 1 of Yabe discloses an electrode pad, and that even though the pad is not labeled, it would
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