Appeal No. 2000-1515 Page 8
Application No. 08/687,195
Here, the appellants stipulate, “[c]laims 1-4, [sic] 6-8, 15
and 16 stand or fall together;” (Reply Br. at 2), “[c]laims 9,
10, 12-14 and 16-18 stand or fall together and . . . [c]laims 21-
23 and 26-29 stand or fall together.” (Reply Br. at 2.) In the
appeal brief, they do not argue separately the patentability of
claims 16, 18, and 23. To the contrary, the appellants
stipulate, “[c]laims 4-8, 11-18, 21-23 and 26-29 stand or fall
together with claims 1, 9 and 21, respectively.” (Appeal Br.
at 6.) In the reply brief, however, the appellants includes a
new argument for the separate patentability of claims 16, 18, and
23. (Reply Br. at 5.)
"We generally will not entertain arguments omitted from an
appellant's opening brief and raised initially in his reply
brief . . . . Considering an argument advanced for the first
obtain protection commensurate with his actual contribution to
the art.’” In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934,
936 (Fed. Cir. 1984)(quoting In re Prater, 415 F.2d 1393,
1404-05, 162 USPQ 541, 550 (CCPA 1969)). “This approach serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified.
Applicants' interests are not impaired since they are not
foreclosed from obtaining appropriate coverage for their
invention with express claim language.” Id. at 1571-72, 222 USPQ
at 936 (citing Prater, 415 F.2d at 1405 n.31, 162 USPQ at 550
n.31).
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