Appeal No. 2000-0459
Application 08/838,584
On page 6 of the brief, appellants state “for each ground of
rejection which applies to more than one claim it is not argued
that the claims within the group subject to that rejection are
separately patentable.” We understand this to mean that
appellants submit that the claims stand or fall together. On
page 3 of the answer, the examiner states that the claims stand
or fall together because appellants’ brief does not include a
statement that this grouping of claims do not stand or fall
together and reasons in support thereof. Hence, we consider
claim 29 in this appeal.1 We also consider claim 24 because this
claim is rejected under 35 U.S.C. § 112, second paragraph.
37 CFR § 1.192(c)(7)(1999).
OPINION
I. The Prima Facie Case of Obviousness
As a preliminary matter, we note that on page 4 of the
answer, the examiner refers to the Office Action of Paper No. 7
regarding the prior art rejection. On page 5 of Paper No. 7, the
examiner expresses the rejection as “Caselli and Seltzer alone or
together in combination with Bohshar.”
We have carefully considered all of the applied references
in connection with the prior art rejection. Based upon this
review, we determine that the examiner has not established why a
person of ordinary skill in the art would have reason,
suggestion, or motivation to select appellants’ combination of
components as set forth in claim 29 in view of the teachings of
Seltzer and Bohshar. For example, Seltzer sets forth a laundry
list of a variety of components (columns 3-19) useful in a
1 Appellants also argue claim 43 based upon the same arguments with respect to
claim 29. Hence, no additional arguments supporting separate patentability
have been provided. Therefore, we need only consider claim 29, the broadest
claim on appeal.
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