Appeal No. 1997-4461
Application 08/482893
Appellants have nominally indicated that the claims on
appeal should stand or fall in two separate groups [brief,
page 3]. Despite this grouping, however, appellants have made
no separate arguments with respect to any of the appealed
claims. Since appellants have failed to appropriately argue
the separate patentability of the claims, all contested claims
stand or fall together. See In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d
989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we
will consider the rejection against independent claim 49 as
representative of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007