Appeal No. 2000-0545
Application 08/638,339
OPINION
With full consideration being given the subject matter on appeal, the Examiner’s
rejection and the arguments of Appellant and Examiner, for the reasons stated infra, we
will affirm the Examiner’s rejection of claims 1-29 rejected under 35 U.S.C. § 103.
On the outset, we note that Appellant states on page 3 of the brief that claims 1
through 29 stand or fall together. We note that Appellant argues all of the claims as a
single group in the brief. 37 CFR § 1.192 (c)(7)(July 1, 1998) as amended at 62 Fed.
Reg. 53196 (October 10, 1997), which was controlling at the time of Appellant’s filing
the brief, states:
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.
Appellant has provided a statement that the claims stand or fall together in regard to the
above groups. We will, thereby, consider Appellant’s claims as standing or falling
together and we will treat claim 1 as a representative claim of that group.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing
that some objective teaching in the prior art or knowledge generally available to one of
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