Appeal No. 1998-0049
Application 08/289,028
Therefore, we agree with Appellants' argument (RBr2) that
the Examiner erred in stating that claims 63 and 88 are not
argued as separately patentable (EA3). However, we note
that the Examiner's Answer does mention claims 63 and 88 (at
EA9).
For claims that are grouped as standing or falling
together, the normal procedure is to select a single claim
from the group and to decide the appeal as to the ground of
rejection on the basis of that claim alone. See 37 CFR
§ 1.192(c)(7) (1999). Claim 61 is the broadest of the
independent claims and is analyzed as the representative
claim. Claim 61 only requires the predetermined instruction
to include locations for mask bits, as compared to claims 74
and 81 in which the instruction includes both mask bits and
status bits. Normally, we do not question an applicant's
grouping of claims. Thus, we ordinarily would not consider
claims 74 and 81 separately or regroup them even though they
appear closer to the scope of dependent claim 63, which is
argued separately, than to independent claim 61. In this
case, however, because we apply different reasoning on the
same references, as discussed infra, to be fair, we will not
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