Appeal No. 2002-0880
Application No. 09/183,214
Rejection of Claims 3, 4, 6 through 11, 16 and 17 under
35 U.S.C. § 103 as being unpatentable over Winkler and Bald.
We note that claims 3, 4, 6 and 7 depend upon claim 1. We further note that
Bald failed to teach “causing the test apparatus to execute a first test based on the
retrieved set of test parameters by providing a control signal to the test apparatus over
a communication link” as recited in Appellants’ claim 1. Therefore, we will not sustain
the Examiner’s rejection of claims 3, 4, 6 and 7 for the reasons stated above.
At the outset, we note that Appellants state on pages 6 and 7 of the brief that
claims 8 through 11 form a fifth separately patentable group and claims 16 and 17 form
an eighth separately patentable group. We further note that Appellants have argued
these claims as these groups in the Argument in the brief. 37 CFR § 1.192 (c)(7) (July
1, 2001) as amended at 62 Fed. Reg. 53196 (October 10, 1997), which was controlling
at the time of Appellants filing the brief, states:
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.
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