Appeal No. 2003-0469
Application No. 09/317,480
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and examiner, for the
reasons stated infra we affirm the examiner’s rejections of claims 1 through 9
under 35 U.S.C. § 103.
At the outset we note that appellant states on page 5 of the brief that “[a]ll
of the claims stand or fall together”. 37 C.F.R. § 1.192(c) (7) (July 1, 2001) as
amended at 62 Fed. Reg. 513196 (October 10, 1997), which was controlling at
the time of appellant filing the brief, states:
For each ground of rejection which appellant contests and which applies
to a group of two or more claims, the Board shall select a single claim
from the group and shall decide the appeal as to the ground of rejection
on the basis if that claim alone unless a statement is included that the
claims of the group do not stand or fall together and in the argument under
paragraph (c) (8) of this section appellant explains which the claims of the
group are believed to be separately patentable. Merely pointing out the
differences in what the claims cover is not an argument as to why the
claims are separately patentable.
We will, thereby, consider the appellant’s claims in three groups, one for each
rejection. Group 1 consists of claims 1 and 2 and we will treat claim 1 as a
representative claim of that group. Group 2 consists of claims 3, 6 and 7 and we
will treat claim 6 as a representative claim of that group. Group 3 consists of
claims 4, 5, 8 and 9 and we will treat claim 4 as a representative claim of that
group. See also In re McDaniel 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002) (“if the brief fails to meet either requirement [of 37 CFR
1.192(c)(7)] the Board is free to select a single claim from each group of claims
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