Appeal No. 2003-1971
Application No. 09/489,970
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 claim 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, thereby, consider Appellants' claims as standing or
falling together and we will treat claim 1 as a representative
claim of that group. See In re McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002) ("If the brief fails to
meet either requirement [of 37 CFR § 1.192(c)(7)], 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.") See also, In re
Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir.
2004).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
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