Appeal No. 2005-0393
Application 09/536,728
The examiner has indicated that claims 25, 27-29, 34-38, 51-54, 66-69 and 82-89 are
allowable.1
As a preliminary matter, we note the appellants’ statement that the claims do not
stand or fall together. Brief, p. 4. The appellants point out that claims 21-24, 26, 40-50,
71 and 73-76 are directed to substituted phenylimonoimidazolines and claims 30-33, 39,
55 to 65, 72 and 77-81 are directed to pharmaceutical compositions comprising
substituted phenyliminoimidazolines and one or more pharmaceutically-acceptable
excipients, adjuvants, carriers, or preservatives. Therefore, the appellants argue that
each of the pending claims stand or fall separately. We disagree. We point out that 37
C.F.R. §1.192(c)(7)(2004),2 states that
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 of 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 [emphasis added].
Here, we find that for each ground of rejection, the appellants have only argued claims
21 and 39. Accordingly, for purposes of this appeal we need only consider the issues
1 We note the appellants’ statement in the reply brief with respect to an
amendment filed on April 19, 2004, to cancel claims 25, 27-29, 34-38, 51-54, 66-69 and
82-89. We point out that the record does not indicate that said amendment was entered
by the examiner.
2 Now, 37 C.F.R. § 41.37(vii).
2
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