Appeal No. 2001-2270
Application 09/235,529
(pages referred to as "EA__") for a statement of the examiner's
rejection, and to the brief (Paper No. 9) (pages referred to as
"Br__") and reply brief (Paper No. 16) (pages referred to as
"RBr__") for a statement of appellants' arguments thereagainst.
OPINION
Grouping of claims
In the principal brief, appellants argued the following
groups of claims (Br4):
Group I: Claims 1, 3-6, 9, and 11
Group II: Claims 2 and 10
Group III: Claim 12
In the reply brief, appellants argues the separate
patentability of claim 6 (RBr9-10), which had not been argued in
the main brief. These arguments, presented for the first time in
the reply brief, are untimely and will not be considered. Cf.
Kaufman Company, Inc. v. Lantech, Inc. , 807 F.2d 970, 973 n.*,
1 USPQ2d 1202, 1204 n.* (Fed. Cir. 1986); McBride v. Merrell Dow
and Pharmaceuticals, Inc., 800 F.2d 1208, 1210-11 (D.C. Cir.
1986) ("We generally will not entertain arguments omitted from an
appellant's opening brief and raised initially in his reply
brief. . . . Considering an argument advanced for the first time
in a reply brief, then, is not only unfair to an appellee, . . .
but also entails the risk of an improvident or ill-advised
opinion on the legal issues tendered."). While 37 CFR
§ 1.192(c)(7) (1999) usually requires each separate ground of
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