Appeal No. 2004-0422
Application No. 09/046,315
We will, thereby, consider Appellants' claims as standing or
falling together in the five groups noted above, and we will
treat:
Claim 5 as a representative claim of Group I;
Claim 5 as a representative claim of Group II;
Claim 13 as a representative claim of Group III;
Claim 5 as a representative claim of Group IV; and
Claim 13 as a representative claim of Group V.
If the brief fails to meet either requirement, the Board is free
to select a single claim from each group and to decide the appeal
of that rejection based solely on the selected representative
claim. In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362, 1368,
69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Whether the Rejection of Claim 5 Under 35 U.S.C. § 112 is
proper?
It is our view, after consideration of the record before us,
that claim 5 does not contain subject matter which was not
described in the specification in such a way as to enable one
skilled in the art to which it pertains, or with which it is most
nearly connected, to make and/or use the invention. Accordingly,
we reverse.
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