Appeal No. 2005-0347 Page 5
Application No. 09/993,335
Appellant has indicated that for purposes of this appeal, the claims stand
or fall together in two groupings corresponding to the two rejections listed above.
See page 4 of the brief. Furthermore, Appellant argues each group of claims
separately and explains why the claims of each group are believed to be
separately patentable. See pages 6-13 of the brief and pages 2-3 of the reply
brief. Appellant has fully met the requirements of 37 CFR § 1.192 (c)(7) (July 1,
2002) as amended at 62 Fed. Reg. 53169 (October 10, 1997), which was
controlling at the time of Appellant’s 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.
We will, thereby, consider Appellant’s claims as standing or falling together in the
two groups noted above, and we will treat:
Claim 2 as a representative claim of Group I (the Kurby rejection); and
Claim 2 as a representative claim of Group II (the Krasner rejection).
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,
1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
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