Appeal No. 2003-1592
Application 09/492,032
whether Shank ‘765, Shanks ‘941, or Lee is applied in the rejection (brief, pages 7-11, 11-13 and
13-15; reply brief, pages 1-4, 4-5 and 6-7).
37 CFR § 1.192(c)(7) (2002) provides:
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. Merely pointing out differences
in what the claims cover is not an argument as to why the claims are separately
patentable.
Accordingly, because appellants have not presented a specific argument with respect to
any claim, we decide this appeal based on appealed claims 1, 12, 17, 28, 30, 43, 44, 46 and 47 as
representative of the respective grounds of rejection. 37 CFR § 1.192(c)(7) (2002); see In re
McDaniel, 293 F.3d 1379, 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 involving appealed claims 1, 28, 30, 43, 44, 46 and
47, that is, the grounds of rejection in which Shanks ‘941 and/or Lee, but not Shank ‘765, are
applied, and reverse the grounds of rejection involving appealed claims 12 and 17, that is, the
grounds of rejection in which Shank ‘765 is applied.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported finding advanced by the examiner that as a matter of law,
prima facie, one of ordinary skill in this art would have found in the combined teachings of
Biondo and Estes, Shanks ‘941, Saaf and/or Lee as applied in the grounds of rejection of
appealed claims 1, 28, 30, 43, 44, 46 and 47, the reasonable suggestion to modify the
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