Appeal No. 2004-2043
Application 09/312,919
Grouping of claims. 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. (Emphasis added)
Therefore, based on the applicability of Appellants’ arguments to
the rejected claims, we will consider Appellants’ claims, as
standing or falling together and we will treat claim 1 as the
representative claim of this group. 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, 1367, 69 USPQ2d 1453, 1457 (Fed. Cir.
2004).
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