Appeal No. 1999-1602
Application No. 08/776,957
We refer to the Final Rejection (mailed Jul. 23, 1998) and the Examiner's Answer
(mailed Oct. 14, 1998) for a statement of the examiner's position and to the Brief (filed
Sep. 25, 1998) for appellants’ position with respect to the claims which stand rejected.
OPINION
Grouping of Claims
Appellants appear to propose separate patentability for two groups of claims,
based on groups of independent claims (Brief at 7), and appellants submit arguments
for each of the two groups. However, appellants present additional arguments for
dependent claims 3, 8 (Brief at 8 and 11), 5, and 10 (Brief at 8-9). We select claim 7 as
representative of claims 2 and 7; claim 9 as representative of claims 4 and 9; claim 8 as
representative of claims 3 and 8; and claim 10 as representative of claims 5 and 10.
See 37 CFR § 1.192(c)(7).
The section 103 rejection
A section 103 analysis begins with a key legal question -- what is the invention
claimed? Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593,
1597 (Fed. Cir. 1987). Thus, we first investigate the scope of the invention claimed,
with particular emphasis on the language that appellants assert distinguishes the claims
over the prior art.
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