Appeal No. 2002-1645 Page 21
Application No. 09/281,553
The obviousness rejection
We sustain the rejection of claim 11 under 35 U.S.C. § 103 as being
unpatentable over Engelhart in view of Fochs but not the rejection of claims 17 and 20.
Claim 11
Dependent claim 11 has not been separately argued by the appellant. In fact,
the appellant (brief, p. 2) has stated that claim 11 stands or falls with claim 1.
Accordingly, claim 11 will be treated as falling with parent claim 1. See In re Young,
927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); and In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978). Thus, it follows that the examiner's rejection of
claim 11 under 35 U.S.C. § 103 is also sustained.
Claims 17 and 20
Claim 17, dependent from claim 14, is patentable over the combined teachings
of the applied prior art5 since the limitation of parent claim 14 not met by Engelhart for
the reasons explained above is not suggested by the applied prior art. Likewise, claim
20, dependent from claim 18, is patentable over the combined teachings of the applied
5 The test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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