Appeal No. 2003-1260 Page 4
Application No. 09/850,654
Appellants, however, have not explained why each of the groups of claims is separately
patentable in a manner which accords with 37 CFR § 1.192(c)(8)(2001). While Appellants
include a paragraph in the Argument section of the Brief (§ VIII) in which they state, for each
group of claims, that the claims are separately patentable followed by a discussion of various
limitations in those claims (Brief, p. 3), such statements merely point out differences in what the
claims cover. But “[m]erely pointing out differences in what the claims cover is not an argument
as to why the claims are separately patentable.” 37 CFR § 1.192(c)(7)(2001). To assure separate
review, Appellants must additionally identify, for each group, 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). This requires a discussion of the errors in the rejection and the differences
between the claims and the prior art for each group.
While Appellants provide reasons for some of the separately grouped claims (Brief, p. 5),
we find no such reasons presented for Group 2. The claims of Group 2, therefore, will not be
considered separately, they will stand or fall with the claim from which they depend, i.e., claim 3
will stand or fall with claims 1 and 2 and claim 15 will stand or fall with claim 13. We select one
claim from each of the separately argued groups to represent the issues on appeal. For Group 1,
we select claim 1. For Group 3, we select claim 8. For Group 4, we select claim 13. For Group
6, we select claim 16.
We affirm with respect to both rejections for the following reasons.
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