Appeal No. 2003-0645 2
Application No. 09/245,625
According to appellants, the invention is directed to an
elastomeric fiber, useful as dental floss, that comprises a
therapeutically effective amount of a chemotherapeutic agent
imbibed in the fiber (Brief, page 2).
Appellants state that the claims do not stand or fall together
(Brief, page 3) and present arguments for each of six groups
(Brief, pages 12-15). As correctly noted by the examiner (Answer,
page 2), appellants do not provide reasonably specific, substantive
arguments for the separate patentability of each group but merely
repeat the claim limitations while reiterating that the references
of record do not suggest these limitations (e.g., see the Brief,
paragraph bridging pages 12-13). Appellants argue that “the
differences in what the claims cover” make the claims of Groups II-
VI separately patentable (Reply Brief, page 2). However, merely
repeating a limitation from one claim in each Group and stating
that the references do not suggest this limitation, without more,
does not qualify as a specific, substantive argument for separate
patentability. See 37 CFR § 1.192(c)(7)(2000), last sentence,
which reads “[m]erely pointing out differences in what the claims
cover is not an argument as to why the claims are separately
patentable.” For example, assuming arguendo that the combination
of Burch and Hill is proper, the Burch reference clearly describes
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