Appeal No. 1999-0704 Page 7
Application No. 08/558,661
we, like the court in Morris and several other decisions cited therein, interpret the terminology
"formed integrally" as encompassing not only unitary construction but also parts which are in a
fixed relationship to one another. Morris, 127 F.3d at 1055, 44 USPQ2d at 1029. In this
regard, one of ordinary skill in the art reading Kelly's disclosure would have inferred, from
Kelly's use of the term "seating" and from the illustration in Figure 12, that the eye 66 and
sleeve 68 are fixed within the bore of the tube 20. We thus conclude that the disclosure of
Kelly's Figure 12 embodiment would have suggested the subject matter of
claim 1.
Accordingly, we shall affirm the examiner's decision to reject independent claim 1, as
well as claims 2, 5, 8, 15 and 16 which stand or fall with claim 1 (see brief, page 5), as being
unpatentable over Kelly. However, since the basis of our affirmance differs from that set forth
by the examiner, we designate our affirmance as a new ground of rejection under 37 CFR §
1.196(b) to give the appellants an opportunity to respond thereto.
Turning next to the rejection of claim 4, while the appellants have indicated on page 5
of the brief that claim 4 is separately patentable from claim 1, the appellants have not in fact
separately argued the patentability of claim 4 apart from claim 1. Therefore, claim 4 stands or
falls with representative claim 1 (see In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978)). As
we have affirmed the examiner's decision to reject claim 1, it follows that we shall also affirm
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