Appeal No. 2004-1274
Application 09/951,616
At the outset, we note that Appellants state on page 9 of
the brief that claims 1 through 23 are presented in a single
group. 37 CFR § 1.192 (c)(7) (July 1, 2003) as 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 appellant contests 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,
appellant 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 the 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
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