Appeal No. 2002-1627
Application No. 09/132,450
regard to claim 1, there is no such limiting requirement in claim
8.
In view of the above discussion, it is our opinion that the
Examiner has established a prima facie case of obviousness with
respect to claim 8 based on the disclosure of Yamakita which has
not been overcome by any convincing arguments from Appellant.
Accordingly, the Examiner’s 35 U.S.C. § 103 rejection of claim 8
based on Yamakita is sustained.
We also sustain the Examiner’s 35 U.S.C. § 103 rejection of
dependent claims 10-15 based on Yamakita. Appellant’s sole
argument (Brief, pages 9 and 10) in response to the Examiner’s
rejection refers to the arguments made with respect to dependent
claims 2-7 which are the apparatus counterparts of method claims
10-15. These arguments, however, specifically mention only claims
2 and 3 and the extent of the arguments is to repeat the language
of the claims. Simply pointing out what a claim requires with no
attempt to point out how the claims patentably distinguish over the
prior art does not comply with 37 CFR § 1.192(c)(8) and does not
amount to a separate argument for patentability. In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525,1528 (Fed. Cir. 1987).
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103 rejection of claims 1-8 and 10-15 based on Ichikawa. With
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