Appeal No. 2002-1395 Page 7
Application No. 08/789,702
the circuit design" and that the template call "referenc[es] the corresponding template
behavioral description." The specification explains that "[t]he template is instantiated in
the behavioral description of the circuit design by including the template call therein."
(Spec. at 9.)
In light of these explanations, we conclude that one skilled in the art would
understand that the claimed template comprises a definition of part of a circuit and a
reference to the definition incorporated into a description of the circuit. Therefore, we
reverse the indefiniteness rejection of claims 1-12, 16-47, and 51.
Anticipation Rejection
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002 (citing 37
C.F.R. §1.192(c)(7) (2001)). "Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately patentable." 37 C.F.R.
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