Appeal No. 2004-2196
Application 09/902,055
Ludwig 5,122,219 Jun. 16, 1992
Moriarity 6,273,701 Aug. 14, 2001
(filed Mar. 19, 1999)
Bayer et al. (Bayer) 0 622 127 Nov. 2, 1994
(published European Patent Application)
The examiner has rejected appealed claims 1 and 3 through 19 under 35 U.S.C. § 103(a)
as being unpatentable over Ludwig in view of Moriarity (answer, pages 3-6), and appealed claims
1, 3 through 7 and 9 through 19 under 35 U.S.C. § 103(a) as being unpatentable over Bayer in
view of Moriarity (answer, pages 6-9).
Appellants state that the appealed claims “1, 7, 8 and 11-16 stand or fall together. Claims
3-6, 9, 10 and 17-19 can be treated separately on the merits should the rejection of claim 1 be
maintained” (brief, page 2). The examiner does not agree because “neither the Grouping of
Claims or the Arguments section of the Appeal Brief provide arguments as to why claims 3-6, 9,
10, 17-19 should specifically be treated separately or arguments as to why these claims are
separately patentable” (answer, pages 2-3). In any event, in the answer (e.g., pages 5-6 and
15-17), the examiner considers claims 3 through 6, 9, 10 and 17 through 19 and responds to
appellants’ argument with respect to the limitations in these claims in the brief (e.g., pages 5-7).
Thus, we decide this appeal based on appealed claims 1, 3 through 6, 9, 10 and 17 through 19 to
the extent argued in the brief. 37 CFR § 1.192(c)(7) (2003); see also 37 CFR § 41.37(c)(1)(vii)
(effective September 13, 2003; 69 Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat.
Office 21 (September 7, 2004)).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-26) that,
prima facie, the claimed method of applying liquid or pasty substances to a backing material by
means of a die encompassed by appealed claim 1, 3 through 6, 9, 10 and 17 through 19 would
have been obvious over the of teachings of Ludwig or Bayer as combined with the teachings of
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