Appeal No. 1998-1472 Page 15
Application No. 08/427,721
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.
In general, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
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).
Here, the appellants state, “[c]laims ... 142, 143, 151,
152, 166, 168, 171 ... stand or fall together.” (Appeal Br.
at 5.) Therefore, we consider these claims to stand or fall
as a group and select claim 151 to represent the group. Next,
we address the anticipation of claims 142, 143, 151, 152, 166,
and 168.
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