Appeal No. 2001-0014 Page 5
Application No. 09/070,899
is insufficient to establish a prima facie case of
obviousness. Accordingly, we will not sustain the examiner’s
rejection of claims 6 through 8 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
Turning to the grouping of the claims, we note that the
appellant on page 4 of the brief points out that the claims do
not stand or fall together. 37 CFR § 1.192(c)(7) (July 1,
1999) 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.
Although the appellant has provided a statement regarding
the groupings of the claims, the appellant has not in the
argument section of the brief provided separate arguments for
claims 6 and 7 and has only supplemented the main arguments
with brief discussion of Edwards for claim 8. We will,
thereby, consider the appellant’s claims 6 through 8 as
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