Appeal No. 1997-2474 Page 5
Application No. 08/125,590
31. We are persuaded, however, that he erred in rejecting
claims 9-23 and 26. Accordingly, we affirm-in-part. Our
opinion addresses the grouping and obviousness of the claims.
Grouping of the Claims
As amended at 60 Fed. Reg. 14518 (Mar. 17, 1995), 37
C.F.R. § 1.192(c)(7) was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
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 ...
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.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
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