Appeal No. 1997-0166
Application No. 08/409,933
We find that neither Yabe, nor either of Merrin or Engeler discloses or suggests a film carrier tape
formed of a resin substantially the same as a resin of the resin film. Accordingly, the rejection of claim
25 under 35 U.S.C. § 103 is also reversed.
In closing, we draw attention to the statement made by appellants' (reply brief, page 3) that
“[a]ppellants disagree with the 35 U.S.C. § 103 rejection of claims 8, 9, and 11-28. For at least the
following reasons, the board should reverse this rejection” [emphasis added]. As stated by our
reviewing court In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991), "[i]t is not the function of this court to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art."
37 CFR § 1.192(a)(July 1, 1996) as amended at 60 Fed. Reg. 14518 (March 17, 1995),
which was controlling at the time of appellants filing the brief, states as follows:
The brief . . . must set forth the authorities and arguments on which the appellant will
rely to maintain the appeal. Any arguments or authorities not included in the brief may
be refused consideration by the Board of Patent Appeals and Interferences, unless
good cause is shown.
Also, 37 CFR § 1.192(c)(8)(iv) states:
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
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