Ex parte YUAN - Page 4




          Appeal No. 1997-0461                                                         
          Application 08/267,683                                                       

          they apply to claims 28, 29 and 31.                                          
               Except for the separate patentability of claims 28, 29                  
          and 31, appellant has failed to argue with any reasonable                    
          degree of specificity the patentability of any specific claim.               
          Accordingly, the patentability of all the claims stands or                   
          falls with independent claim 23 and, except for claims 28, 29                
          and 31, we shall decide the patentability of all the claims                  
          based on the patentability of claim 23. In re Nielson, 816                   
          F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); In re                 
          Kroekel, 803 F.2d 705,                                                       


          709, 231 USPQ 640, 642 (Fed. Cir. 1986).  See also 37 C.F.R.                
          1.192(c)(7) (1996).3                                                         
               Claim 23 is directed to a lubricant which requires two                  
          components: (1) molybdenum disulfide powder; and, (2) a liquid               
          in which the molybdenum disulfide powder is dispersed to form                


           We recognize, as does the examiner, that appellant has3                                                                       
          stated on page 3 of his main brief that "Claims 23-31 are                    
          to be considered as a group."  However, it would constitute an               
          exaltation of form over substance to give effect to                          
          appellant's statement above while ignoring appellant's other                 
          statement of separate arguments made in both his brief and                   
          reply brief concerning the separate patentability of claims                  
          28, 29 and 31.                                                               
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