Appeal No. 2001-0299 11
Application No. 08/993,861
1.192(c)(7), “[m]erely pointing out differences in what the claims cover is not an
argument as to why the claims are separately patentable.” In that claim 11 recites four
separate means-plus-function limitations and appellants’ brief7 failed to specify which
such limitations in claim 11 are not met by Koch, much less point out specifically what
structure described in appellants’ specification corresponds to the specific means-plus-
function limitation8 allegedly not met by Koch, appellants have in effect failed to make
any separate argument as to why claim 11 is patentable apart from claims 1 and 7. 9
Appellants’ implication on page 12 of the request for rehearing that appellants have not
been given fair notice of the basis of the examiner’s rejection of claim 11, with particular
regard to the means-plus-function language therein, is both unconvincing and
disingenuous, inasmuch as the examiner’s treatment of the structure addressed by the
means-plus-function limitations, albeit not explicitly referring to the means-plus-function
7 We also note that even appellants’ request for rehearing does not specify which means-plus-
function limitations are not met by Koch.
8 Mere reference to substantially the entirety of the description of the preferred embodiment sheds
absolutely no light on which claim limitation appellants are alleging is not met by the applied prior art.
9 Cf. In re Baxter Travenol Labs, 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It
is not the function of this court to examine the claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.”); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661
(CCPA 1979) (arguments must first be presented to the Board).
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