Appeal No. 1997-2849
Application No. 08/348,811
note that Appellant argues claims 1 through 7 as a single
group in the brief. 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 Appellant's 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 claims cover is
not an argument as to why the claims are separately
patentable.
On pages 8 and 9 of the brief, Appellant argues that a person
ordinarily skilled in the art of designing zoom lenses would
have found no suggestion in Umeda of moving the third lens
group in the zoom lenses of Tokumaru for image stabilization.
Appellant agrees that Tokumaru discloses a -+-+ zoom lens
system. However, Appellant argues that Tokumaru is not
concerned with image stabilization by moving the third lens
group in the direction substantially perpendicular to the
optical axis for the purpose of image stabilization.
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