Appeal No. 1997-2656
Application No. 07/907,472
In item (8) with respect to claims 8 and 9, appellants clarify the statement at
page 18 of the brief concerning a hypothetical situation. (See Request for Rehearing at
pages 12-14.) While we understand appellants' position, we note that statement "at this
point in their Brief" may be easily misunderstood to encompass sections (a)(1) - (a)(6)
since the next section is entitled "The Claims are Patentable Over the Applied Art."
Therefore, in light of the clarification, we withdraw our reliance on the statement as
evidence of a lack of argument and have addressed appellants' arguments above.
With respect to claims 8 and 9, appellants argue that there are significant differences
between claims 8 and 9. (See brief at page 18.) We agree with appellants that the
claims are different and that claim 1 implements a feature of both claim 8 and claim 9.
Yet, at pages 17-19 of the brief in the groupings section, we find no argument for these
claims with respect to patentability over the admitted prior art and Yoshida. Appellants
identify page 19, lines 2-3 of the brief which states that claims 1, 8, and 9 "require
separate consideration as to patentability over the prior art" as contradiction to our
findings in the decision that appellants have not provided separate arguments for
patentability. (See Request for Rehearing at page 13.) This argument is not
persuasive since appellants have not addressed the teachings of the prior art.
Appellants argue that "having demonstrated that the claim recitations had not
been considered by the Examiner, appellants had presented requisite and sufficient
arguments for patentability of each of these claims." (See Request for Rehearing at
12
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