Appeal No. 1999-2021
Application No. 08/615,836
We cited authority on page 5 of our decision that if the claims are not argued individually, the
Board is not under duty to treat them individually. We refer appellant to our decision on this issue
at pages 5 and 6 of our decision.
Regarding the examiner’s responsibility regarding the propriety of the grouping of claims,
we quote below the requirements for an examiner’s answer from the Manual of Patent Examining
Procedures (MPEP) § 1208 as follows:
Grouping of Claims. A statement of whether the examiner disagrees
with any statement in the brief that certain claims do not stand or fall
together, and, if the examiner disagrees, an explanation as to why
those claims are not separably patentable.
Even assuming that we go along with the examiner’s observation that the claims do not
stand or fall together and that the examiner considered the conclusory statement made on page 11 of
the brief as sufficient to appear consistent with the reasons for arguing the claims individually, it is
ultimately the Board’s responsibility to determine the propriety of the arguments regarding the
individual claims. We find that the statements made on page 11 of the brief are merely conclusory
and there are no substantive arguments presented by appellant regarding the individual claims listed
on page 11. The examiner on the other hand has given a prima facie case of obviousness for claims
2, 5, 9, 12, 14 and 18 listed on page 11 of the brief at pages 5 and 6 of the examiner’s answer.
Since appellant has not given any rebuttal to those rejections, we find that there are no individual
arguments for the patentability of those claims.
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