Appeal No. 2001-0338
Application No. 08/932,953
For each ground of rejection which appellant contests
and which applies to a group of two or more claims, 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 unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable.
We will, thereby, consider the Appellants' claims as standing or
falling together and we will treat claim 5 as a representative
claim of that group. See also In re McDaniel, 293 F.3d 1379,
1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) ("If the brief fails
to meet either requirement [of 35 CFR § 1.192(c)(7)] the Board is
free to select a single claim for each group of claims subject to
a common ground of rejection as representative of all claims in
that group and to decide the appeal of that rejection based
solely on the selected representative claim.")
We now turn to the Examiner's rejection of claim 5. In
rejecting a claim under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 1443, 1444 (Fed. Cir.
1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden
55
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007