Appeal No. 2002-2077
Application No. 09/273,363
features of these claims with no analysis or discussion of
obviousness whatsoever. Simply pointing out what a claim
requires with no attempt to point out how the claims patentably
distinguish over the prior art does not amount to a separate
argument for patentability. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). At the time
appellants' brief was filed, 37 C.F.R. § 1.192(c)(7) required
that the argument explain “ why the claims...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.” Appellant’s arguments fail to satisfy
this requirement as a basis to have the claims considered
separately for patentability. Since appellant is considered to
have made no separate arguments for patentability, all claims
will stand or fall together. 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). Accordingly,
we will consider the rejection against claim 1 as representative
of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
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