Appeal No. 2004-1461
Application No. 09/461,883
Appellants have nominally indicated that the claims are
separately patentable, but they have not specifically argued the
limitations of each of the claims. The extent of appellants’
arguments, with respect to the dependent claims, appears on pages
12-17 of the brief wherein it is stated what is recited in each
of the claims. Then it is baldly asserted that the prior art
does not teach or suggest the features of these claims, but
offers no analysis or discussion of obviousness whatsoever.
Simply pointing out what a claim requires with no attempt to
point out how the claims patentably distinguish over the prior
art does not amount to a separate argument for patentability.
See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987). At the time appellants’ brief was filed, 37 CFR
§ 1.192(c)(7) required that the argument explain “why the claims
. . . 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.” Appellants’ arguments
fail to satisfy this requirement as a basis to have the claims
considered separately for patentability. Since appellants are
considered to have made no separate arguments for patentability
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