Appeal No. 1998-1659
Application No. 08/486,635
§ 1.192(c)(7). Appellant merely restated the claim limitation
of claim 8, which is insufficient as an argument for separate
patentability. As stated in 37 CFR § 1.192(c)(7),
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.)
Appellant (Request, pages 2-4) now argues the examiner's
treatment of claim 8 in the Answer, though appellant filed a
Reply Brief and made no mention of claim 8 therein. Normally
we would not consider appellant's attempt to belatedly present
new arguments directed to the examiner's rejection of a claim,
since a new argument advanced in a request for rehearing, but
not advanced in appellant's briefs, is not properly before the
Board. See Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App.
1971) wherein the Board held that an argument advanced in the
petition as to disclosure relied upon by the examiner and not
advanced in the brief or the reply brief constituted a new
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