Appeal No. 1998-0870
Application No. 08/325,015
manufacturing an antistatic, light-absorbing coating on a
display screen of a display device (Brief, page 2).
37 C.F.R. § 1.192(c)(7)(1995) reads as follows:1
“Grouping of claims. 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.”
(Bolded emphasis added.)
Thus, under the above rule, two requirements must be met in
order to have different sets of claims considered separately
in an appeal. First, the appeal brief must positively state
that the claims do not stand or fall together. Second, the
appeal brief must explain why the claims are separately
patentable. Merely reciting what the claims cover is not
sufficient.
1We apply the version of this rule in effect at the time of the filing
of the appeal brief.
2
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007