Appeal No. 2004-1572
Application No. 09/370,104
considered and are deemed to be waived by Appellants [see 37 CFR § 41.37(c)(1)(vii) effective
September 13, 2004 replacing 37 CFR § 1.192(a)].
Appellants have indicated that for purposes of this appeal the claims stand or fall together
in two groupings:
Claims 1-8, 9-11, 17-21, 29-33, 37-38, and 43-48, as Group I; and
Claims 12-16, 22-28, 34-36, 39-42, 49-51, and 52-61, as Group II.
See page 6 of the brief. Appellants argue each group of claims separately and explain why the
claims of each group are believed to be separately patentable. See pages 7-18 of the brief and
pages 2-8 of the reply brief. However, Appellants have not fully met the requirements of
37 CFR § 1.192 (c)(7) (July 1, 2003) as amended at 62 Fed. Reg. 53169 (October 10, 1997),
which was controlling at the time of Appellants’ filing of the brief. 37 CFR § 1.192 (c)(7) states:
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)
The claims of Appellants’ Group I are not all rejected under the same grounds of
rejection. Therefore, we will, thereby, consider Appellants’ claims as standing or falling
together in three groups:
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