Appeal No. 1997-2455 Application 08/318,235 Claims 55, 77, 78 and 83 stand rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter of the invention. Rather than reiterate the arguments of Appellants and the Examiner, reference is made to the brief and the answer for the respective details thereof. OPINION At the outset, we note that Appellants state on page 10 of appeal brief (brief) that with respect to the rejection based upon 35 U.S.C. § 112, second paragraph, claims 77, 78 and 83 stand or fall together. 37 C.F.R. § 1.192(c)(7) (July 1, 1995) as amended at 60 Fed. Reg. 14518 (March 17, 1995), which was controlling at the time of Appellants, 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. 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007