Appeal No. 2003-0469
Application No. 09/317,480
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.”) See also In re Watts 354 F.3d 1362, 69 USPQ2d 1453,
(Fed. Cir. 2004).
Appellant makes two principal arguments, which are directed to all of the
rejections based upon 35 U.S.C. § 103. First, on page 5 of the brief appellant
argues “[t]he examiner’s reliance on Yu is improper, since Yu, when considered
as a whole, teaches away from the present invention. The Examiner has not
considered Yu as a whole, but rather has selectively extracted elements from Yu
to reject Applicant’s claims.” On pages 5 through 8 of the brief appellant provides
the rationale to support the first argument. On page 9 of the brief, appellant
presents the second argument that “[t]he examiner’s rejection based upon
Benveniste relies on argument by insufficiently substantiated analogy.” The
rationale supporting this argument is provided on pages 9 through 11 of the brief.
Before we consider the examiner’s rejection we must first determine the
scope of the claims. Claims will be given their broadest reasonable interpretation
consistent with the specification, limitations appearing in the specification will not
be read into the claims. In re Etter 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir.
1985). In analyzing the scope of the claim, office personnel must rely on the
appellant’s disclosure to properly determine the
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