Appeal No. 2004-2284
Application 09/832,873
Appellants state that “each of claims 1-16 are separately patentable for the reasons set
forth hereinbelow” (brief, page 5). With respect to the first ground of rejection, appellants
present substantive arguments for claim 1 and for each of the groupings claims 6 and 7 and
claims 13 through 16, but merely note the “additional features” of claim 5 (brief, pages 17-18).
With respect to the second and third grounds of rejection, appellants present general arguments
and merely note the additional features of each of claims 2 through 4 and of claims 8 through 12
(id., pages 19-20 and 22).
We select one claim for consideration in each ground of rejection unless appellants
provide reasons why an additional claim or additional claims in a ground of rejection is/are
separately patentable. We point out that the controlling rule cautions that “[m]erely pointing out
differences in what the claims cover is not an argument as to why the claims are separately
patentable.” Thus, we decide this appeal based on appealed claims 1, 2, 6, 8 and 13 as
representative of the grounds of rejection and of groups of claims where appellants submit
substantive arguments for separate patentability. 37 CFR § 1.192(c)(7) (2002); see In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (“See 37 CFR
1.192(c)(7) (2001). If the brief fails to meet either requirement, the Board is free to select a
single claim for 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 the rejection based solely on the selected
representative claim.”); see also 37 CFR § 41.37(c)(1)(vii) (effective September 13, 2004; 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 that, prima facie, the claimed
process of dispersing fibrous paper stock encompassed by appealed claims 1, 6 and 13 would
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