Appeal No. 2003-1031 Page 5
Application No. 09/050,841
A. CLAIMS 1-7, 9, 22-27, 29, 42-46, 51, AND 52
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37
C.F.R. §1.192(c)(7) (2001)). "Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately patentable." 37 C.F.R.
§ 1.192(c)(7). "If the brief fails to meet either requirement, the Board is free to select a
single claim from each group of claims 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." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.
Here, the appellants argue claims 1-4, 6, 7, 22-24, 26, 27, and 42-46 as a group,
viz., "Group I". (Supp. Appeal Br. at 9-13.) Furthermore, they do not separately argue
the patentability of claim 5 or claim 25. Therefore, claims 2-7, 22-27, and 42-46 stand
or fall with representative claim 1. With this representation in mind, rather than reiterate
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