Appeal No. 1998-1408 Page 5
Application No. 08/569,529
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellants and examiner. After
considering the totality of the record, we are persuaded that
the examiner did not err in rejecting claims 1, 5-7, and 15-
18. We are also persuaded, however, that he did err in
rejecting claims 2-4. Accordingly, we affirm-in-part. Our
opinion addresses the grouping and obviousness of the claims.
Grouping of the Claims
When the appeal brief was filed, 37 C.F.R. § 1.192(c)(7)
(1997) included the following provisions.
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 ... why the claims are separately
patentable.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007