Appeal No. 1999-2229
Application No. 08/832,167
scope and involve different categories of invention, the appellants affirmatively state
that “[t]he claims on appeal shall stand or fall together” (Brief, page 3). Accordingly, in
assessing the merits of the above noted rejections, we will focus upon independent
composition claim 13 as representative of the claims involved in these rejections. See
37 CFR § 1.192(c)(7)(8) (1998) and Ex parte Schier, 21 USPQ2d 1016, 1018 (Bd. Pat.
App. Int. 1991). Claim 13 has been selected as the representative claim because it is
at least one of the broadest, if not the broadest, appealed claim.
We refer to the Brief and the Reply Brief and to the Answer for a complete
exposition of the opposing viewpoints expressed by the appellants and by the examiner
concerning the aforementioned rejections.
OPINION
For the reasons set forth in the Answer and below, we will sustain each of the
rejections before us on this appeal.
The issues pivotal for resolution of this appeal have been reasonably well
crystallized on the subject appeal record. It is the examiner’s position that Manary or
Polss would have suggested component (a) of the appellants’ claimed composition, and
the appellants do not argue otherwise. However, the appellants vigorously disagree
with the examiner’s determination that, since both Manary and Polss are silent
regarding the presence of claim component (b), these prior art compositions must
satisfy the claim requirement concerning this component (i.e., that the composition
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