Appeal No. 2005-0651
Application 09/826,486
Appellant has indicated that for purposes of this appeal the
claims stand or fall together. See page 3 of the brief. We read
this as the claims stand together in two groups based on the two
grounds of rejection. 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 two groups, and we will treat:
Claim 1 as a representative claim of Group I (claims 1-8 and
13); and
Claim 9 as a representative claim of Group II (claim 9).
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
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007