Appeal No. 2005-0376
Application No. 10/034,120
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.
See also In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002)
(“If the brief fails to meet either requirement [of 37 CFR § 1.192(c)(7)], the Board is free
to select a single claim from 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 that
rejection based solely on the selected representative claim.”).
Appellants’ purported explanation of why an individual claim is believed to be
separately patentable consists, in most cases, of a repetition of the claim language, an
allegation that the references fail to disclose what is quoted -- without addressing the
portions of the references pointed out by the examiner in support of the relevant findings
-- and the reasoning that the rejection of the claim is improper “for the reasons set forth
above” with respect to another claim. Parroting of claim language is not an argument
for separate patentability of the claim, under the rules effective at the filing of the Brief or
at present. See 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)) (“A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
We will therefore select representative claims and address only those arguments
that are sufficient to be regarded as an explanation as to why a claim is believed to be
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