Appeal No. 2002-2169 Page 11
Application No. 09/163,286
allows the signal to be derived from the transmissions via post processing. Therefore,
we reverse the nonenablement rejection of claim 12.
Obviousness Rejection of Claims 1-7
"[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.
§ 1.192(c)(7) (2002). "If 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." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.
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