Appeal No. 2003-1367
Application No. 09/640,237
37 CFR § 1.192(c)(7) (2002) provides in pertinent part:
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 that ground of rejection on the basis of 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 why the claims
of the group are believed to be separately patentable.
Accordingly, we decide this appeal based on claims 1, 3, 6, 8, 10, 14, and 16 as
representative of the respective grounds of rejection because appellant has not submitted
argument specifically addressing the patentability of one or more claims in any ground of
rejection. 37 CFR § 1.192(c)(7)(2002); see In re McDaniel, 293 F.3d 1397, 1383, 63 USPQ2d
1462, 1465 (Fed. Cir. 2002) ("See 37 CFR § 1.192(c)(7) (2001). If the brief fails to meet either
requirement, the Board is free to select a single claim for 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 the rejection based solely on the selected representative claim.").
We affirm the grounds of rejection of claims 1 through 7 and 18. We reverse the grounds
of rejection of claims 8 through 11 and 14 through 17 because we find that the examiner has
failed to set forth a prima facie case of obviousness with respect to these claims. Accordingly,
the decision of the examiner is affirmed-in-part.
Rather than reiterate the respective position advanced by the examiner and appellant, we
refer to the examiner's answer and appellant's brief and reply brief for a complete exposition
thereof.
Opinion
The first step in reviewing the application of the prior art to the appealed claims is to
interpret the language of the claim by giving the claim terms their broadest reasonable
interpretation consistent with the written description provided in appellant's specification as it
would be interpreted by one of ordinary skill in the art. See, e.g., In re Hyatt, 211 F.3d 1367,
1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55,
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