Appeal No. 2002-0322
Application 08/681,870
As correctly pointed out by the examiner at page 2 of the answer, A[a]ppellants have
stipulated that claims 1-15 should stand or fall together.@ See page 3 of the brief. Also, see 37
CFR ' 1.192(c)(7) and (c)(8) (2000) and In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d
1462, 1465 (Fed. Cir. 2002) (Aif the brief fails to meet either requirement, the Board is free to
select a single claim from 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@). Consequently, I would have chosen one representative claim,
for example, claim 1. However, the majority has chosen to select three representative claims for
less than compelling reasons from my point of view. In so doing and based on an incorrect
analysis form my perspective, the majority has decided to reverse the examiner=s rejection with
respect to claim 9.
According to the majority, this is so because the composition disclosed in Horiuchi Adoes not
contain an unsaponified ethylene copolymer and an unneutralized acid copolymer, and there is no
disclosure that the cover further includes a metal salt@. Of those listed items, claim 9 only
specifies a metal salt and an ethylene copolymer, which copolymer is open as to what degree, if
any, that it may have been saponified, neutralized or hydrolyzed. In this regard, it is noted that
the language Athe acid copolymer comprising about 0 to 90 parts by weight of the overall
composition@ as appears in claim 9 leaves claim 9 open to the presence of no acid polymer that
includes Aabout 1% to about 30% acrylic acid@ as a separate component of the claimed cover.
Horiuchi discloses a cover that includes an ethylene copolymer in the specified amount (SA420)
and a metal salt (any of the Hi-milan ionomer resins comprise a metal salt). See Table 1,
examples 1 and 2 of Horiuchi.
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