Appeal No. 2000-0451
Application No. 08/726,088
claim 6 as being "a specious basis for upholding an otherwise
defective rejection" (request, page 2).
37 CFR §§ 1.192(c)(7) and 1.192(c)(8)(iii) clearly place
the burden on appellant to state in the brief that the claims
of a given group subject to a particular ground of rejection
"do not stand or fall together" and also to present arguments
for the separate patentability of each of the claims to be
contested, and, with regard to a rejection based on 35 U.S.C.
§ 102, requires appellant to specify the error in the
rejection and to set forth why a particular claim or group of
claims is patentable, including any specific limitations in
the rejected claim or claims which are not present in the
prior art relied upon in the rejection. If, as in the present
case, appellant has not complied with the above dictates of 37
CFR § 1.192, then the regulation provides that the Board
"shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of that
claim alone." As was made clear in the paragraph bridging
pages 12 and 13 of our decision mailed March 29, 2001, this is
essentially what transpired with regard to appellant's
3
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007