Appeal No. 1997-3361
Application No. 08/554,939
U.S.C. § 103. Accordingly, we affirm. The reasons for our
determination follow.
As a preliminary matter, we note that the appellants urge
separate consideration for (1) claims 1, 7 through 9, and 21, (2)
claim 10, and (3) claims 16 through 18, 20, and 23. (Appeal
brief, pages 6-7.) Regarding group (3), however, the appellants
do not explain why these claims are separately patentable over
the claims of groups (1) and (2). Merely pointing out
differences in what the claims recite is not an argument as to
why they are separately patentable. See 37 CFR § 1.192(c)(7)
(1995). We therefore select claims 1 and 10 from the three
groups of rejected claims and decide this appeal as to the
examiner’s grounds of rejection on the basis of these claims
only.
We consider first the examiner’s rejection of claims 1, 7,
8, and 9 under 35 U.S.C. § 102 as anticipated by Kojima ‘370.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); accord Glaxo Inc. v. Novopharm Ltd.,
52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995). In
addition, the prior art reference must disclose the limitations
of the claimed invention “without any need for picking, choosing,
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