Appeal No. 1998-0370
Application No. 08/568,410
Appellants have indicated (Brief, page 2) that, for the purposes of this appeal, “all
claims can be considered together.” Appellants argue all of the claims together. As stated
in 37 CFR § 1.192(c)(7)(1995),
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.
(Underlining added for emphasis)
Appellants have failed to explain why the additional features of dependent claims 3-10 are
separately patentable. Therefore, we have limited our consideration of the issues raised by
this appeal as they apply to claim 1.
OPINION
Our initial inquiry is directed to the scope of the claimed subject matter. During
patent prosecution, claims are to be given their broadest reasonable interpretation
consistent with the specification, and the claim language is to be read in view of the
specification as it would be interpreted by one of ordinary skill in the art. In re Morris,
127 F.3d 1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548,
-3-
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