Appeal No. 2004-1168
Application 09/884,518
accompanied by the fee set forth in § 1.17(c) and must set
forth the authorities and arguments on which [A]ppellant will
rely to maintain the appeal. Any arguments or authorities
not included in the brief will be refused consideration by the
Board of Patent Appeals and Interferences, unless good
cause is shown.
Thus, 37 CFR § 1.192(a) provides that only the arguments made by Appellant in
the brief will be considered and that failure to make an argument constitutes a waiver on
that particular point. Support for this rule has been demonstrated by our reviewing court
in In re Berger, 279 F.3d 975, 984, 61 USPQ2d 1523, 1529 (Fed. Cir. 2002), wherein
the Federal Circuit Court stated that because the Appellant did not contest the merits of
the rejections in his brief to the Federal Circuit court, the issue is waived. Our reviewing
court has stated that the court has “frequently declined to hear arguments that the
applicant failed to present to the Board.” Watts, 354 F.3d at 1367-68, 69 USPQ2d at
1457-58.
In the instant case, we have addressed Appellant’s arguments above as per
claim 1 and Appellant has chosen to make no further argument as to claims 2-6.
Applying the rule above, we will sustain the Examiner’s rejection of claim 1 and its
dependent claims 2-6 under 35 U.S.C. §102 based on Hubscher.
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