Ex Parte ECCLES - Page 2




          Appeal No. 2001-2449                                                        
          Application No. 08/637,802                                                  


          fails to provide specific, substantive reasons for the separate             
          patentability of any claims except claims 1 and 7 (Brief, page 6;           
          Answer, page 2, ¶(7)).  Accordingly, we limit our consideration to          
          claims 1 and 7 on appeal.  We note that the mere reiteration of the         
          limitations of a dependent claim is not a substantive reason for            
          the separate patentability thereof (e.g., see the Brief, page 11).          
          See 37 CFR § 1.192(c)(7)(8)(1997).  Illustrative independent claim          
          1 is reproduced below:                                                      
               1.  Fire scale resistant, work hardenable jewelry silver alloy         
          compositions comprising:                                                    
               0.5-5.5% by weight copper;                                             
               0.07-6% by weight of a mixture of zinc and silicon, wherein            
          said silicon is present in the range of 0.02 to 2.0% by weight;             
               0.01-2.5% by weight germanium; and                                     
               at least 86% by weight silver.                                         
               The examiner has relied upon the following references as               
          evidence of obviousness:                                                    
          Bernhard et al. (Bernhard)      5,039,479          Aug. 13, 1991            
          Rateau et al. (Rateau)          2 255 348 A        Nov.  4, 1992            
          (published UK Patent Application)                                           
               The claims on appeal stand rejected under 35 U.S.C. § 103(a)           
          as unpatentable over Bernhard in view of Rateau (Answer, page 5).           




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