Appeal No. 2004-1228
Application No. 09/813,088
page 3)); and
IV. claims 1 through 7, 18 through 32, and 40 through 46
under the judicially created doctrine of obviousness-
type double patenting as unpatentable over claims 1
through 8 of Burger (answer, page 3; Nov. 6, 2001
Office action, page 4).
We reverse rejection I but affirm rejections II through IV
for essentially those reasons set forth by the examiner. 1
I. 35 U.S.C. § 112, ¶1, Written Description:
Claims 18-22
As an initial matter, it is important to emphasize that the
examiner bears the initial burden of presenting a prima facie
case of unpatentability, whether it be based on prior art or on
any other ground. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). “Insofar as the written description
requirement is concerned, that burden is discharged by
1 Regarding rejection IV, the appellant submits that all
claims stand or fall together. (Substitute appeal brief filed
Jul. 31, 2003, paper 18, p. 9.) As to rejections II and III, the
appellant urges that the claims are separately patentable. ( Id.)
We point out, however, that merely pointing out differences in
what the claims cover is not an argument for separate
patentability within the meaning of 37 CFR §
1.192(c)(7)(2003)(effective Apr. 21, 1995). Nevertheless, we
will consider the claims separately to the extent that the
appellant argues them separately within the meaning of the
regulation.
4
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