Ex Parte BERGEN et al - Page 9



                    Appeal No. 2003-1967                                                                                                                                  
                    Application No. 08/970,889                                                                                                                            

                    Therefore, we will not sustain the Examiner's rejection of these                                                                                      
                    claims for the same reasons as above.                                                                                                                 
                              Claims 17-20 stand rejected under 35 U.S.C. § 103 as being                                                                                  
                    unpatentable over Barber in view of Yeo and Shibata.                                                                                                  
                              At the outset, we note that Appellants state on page 6 of                                                                                   
                    the brief that claims be considered separately patentable.                                                                                            
                    However, in the brief and reply brief, we note that Appellants                                                                                        
                    argued claims 17-20 as a group.  No other claims are argued.                                                                                          
                    37 CFR § 1.192(c)(7) (July 1, 2001) as amended at 62 Fed. Reg.                                                                                        
                    53196 (October 10, 1997), which was controlling at the time of                                                                                        
                    Appellants filing the brief, states:                                                                                                                  
                              For each ground of rejection which [A]ppellants contest                                                                                     
                              and which applies to a group of two or more claims, the                                                                                     
                              Board shall select a single claims from the group and                                                                                       
                              shall decide the appeal as to the 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, Appellants 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.                                                                                                           
                    We will consider Appellants' claims 17-19 as standing or falling                                                                                      
                    together and we will treat claim 17 as a representative claim of                                                                                      
                    that group.  See also In re McDaniel, 293 F.3d 1379, 1383, 63                                                                                         
                    USPQ2d 1462, 1465 (Fed. Cir. 2002) ("If the brief fails to meet                                                                                       

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