Appeal No. 1998-0871
Application No. 08/406,301
At the outset, we note that appellants state (brief, page 5) that “As argued, claims 1-12 stand
or fall together as one group.” We further note that in the brief and reply brief,
appellants argue language found in each of independent claims 1, 6 and 7, and also provide additional2
arguments with respect to claim 7. With respect to claims 9 and 10, we further note that appellants do3
not specifically argue reasons for separate patentability, and refer to claims 9 and 10 only to the extent
of stating (brief, page 8) that the Murayama reference does describe how to avoid right-to-left type
image inversions by using circuitry, but that the reference does not overcome “the basic failings of the
examiner’s combination of Dunlap, Lim, and Miyashita, as described above for independent claim 7.”
37 CFR § 1.192 (c) (7) (July 1, 1996) 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 clams cover is not argument as to why the claims are separately patentable.
Accordingly, we will consider appellants’ claims 1-6 as standing or falling together and we will treat
claim 1 as a representative claim of that group. In addition, we will consider claims 7-12 as standing or
Claims 1, 6 and 7 come under the same ground of rejection, i.e., under 35 U.S.C. § 103 as unpatentable over2
Lim in view of Dunlap and Miyashita.
Claims 9 and 10 come under a different ground of rejection, i.e., under 35 U.S.C. § 103 over Lim in view of3
Dunlap , Miyashita and Murayama .
(4)
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