Appeal No. 1999-0236
Application 08/624,173
The claims are grouped to stand or fall together (Br4).
The Examiner selects claim 6 as the representative claim (EA4)
and later refers to "[c]laim 6 the sole claim at issue . . ."
(EA7). Appellant argues (RBr3-4):
[C]ontrary to the Examiner's assertion, Claim 6 is not
the "sole claim at issue" on this appeal. The Appellant
has appealed the final rejection of Claims 1, 2, 4-6,
8-16, 18 and 19. According to 37 C.F.R. 1.192(b)(7),
"[f]or each ground of rejection . . . 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" (emphasis added). The Examiner can not
unilaterally decide which claim of a rejected group shall
form the basis for deciding the appeal.
There is nothing wrong with an examiner choosing which
claim from the group to address in the examiner's answer.
Normally, an appellant has already identified a representative
claim in the brief. However, the Board is not bound by an
examiner's (or an appellant's) selection of a representative
claim. Here, the Examiner selected claim 6 as the broadest
claim because of his interpretation (EA6-7) that claim 6 does
not have the limitation of "at least two laser diodes," as
recited in independent claims 1 and 15, or "a plurality of
laser emitters," as recited in independent claim 18. We
conclude that the "illuminating means" in claim 6 must be
construed to cover at least two laser diodes, as discussed
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