Appeal No. 2002-1191
Application No. 09/101,175
Appellants state on page 5 of the Brief “[f]or purposes of this appeal, arguments in
support of patentability of claims 21-24, 27-35, 37 and 40-44 will be presented. Appellants
reserve the right to present additional reasons why the dependent claims are patentable over
the prior art.” However, Appellants argue all of the claims together. As stated in 37 CFR
§ 1.192(c)(7),
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.
(Underlining added for emphasis)
Appellants have failed to explain, for each ground of rejection, why the claims are believed
to be separately patentable. We will consider the claims separately only to the extent that
separate arguments are of record in this appeal. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983); 37 CFR § 1.192(c)(7)(2001).5
5 We note that the Examiner has proposed grouping the claims into two separate groups
Group I: 21-24, 27-34 and 44; and Group II: 35 and 37-43. (Answer, p. 2). Appellants have
acquiesced to this grouping in the Reply Brief page 2. However, the stated groups are not limited
to the separate grounds of rejection. That is the groups as presented bridge the Examiner’s basis
of rejection.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007