Appeal No. 2005-0968 Page 4
Application No. 09/998,343
group are believed to be separately patentable. See pages 4-10 of the brief.
Therefore, Appellants have not 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 Appellants’ 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 Appellants’ claims as standing or falling together in a
single group based on Appellants’ argument, and we will treat claim 1 as a
representative claim of that group. 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).
I. Whether the Rejection of Claims 1-12 Under 35 U.S.C. § 103 is
proper?
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention as set forth in claims 103. Accordingly, we
affirm.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing that some objective teaching in the
prior art or knowledge generally available to one of ordinary skill in the art suggests
the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
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