Appeal No. 2004-1092 Page 3
Application No. 10/014,425
Accordingly, we will affirm the examiner’s rejection for
substantially the reasons set forth by the examiner in the
answer. Because we are in agreement with the examiner’s factual
findings and response to appellants’ arguments, we adopt the
examiner’s factual findings and rebuttal as our own. We add the
following for emphasis.
While appellants’ assert that the claims should not stand or
fall together, appellants have not fairly explained on this
record how each of the claims are separately patentable over the
applied prior art. Consequently, we select claim 2 as the
representative claim on which we decide this appeal. See 37 CFR
§ 1.192(c)(7) and (c)(8) (2002) and In re McDaniel, 293 F.3d
1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (“if the brief
fails to meet either requirement, 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”).
The claims at issue here are product-by-process claims. As
such, we note that the product made by the process, not the
process per se, is the focus of our inquiry in assessing the
subject matter at issue. See In re Thorpe, 777 F.2d 695, 697,
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