Appeal No. 2005-1169 Page 4
Application No. 09/900,063
DISCUSSION
Initially, we note that appellants argue that the claims do not stand or fall
together, and set forth the subject matter of each claim. See Appeal Brief, pages
6-8. In argument, however, appellants only separately argue the patentability of
the independent claims, i.e., claims 1, 27, 36 and 54. See id. at 12-13. We thus
group the claims into four groups, with group I comprising claim 1 and the claims
dependent thereon, i.e., claims 2, 3, 8-11, 16, 17, 19, 20 and 26; group II
comprising claim 27 and the claims dependent thereon, i.e., claims 28 and 29;
group III comprising claim 36 and the claims dependent thereon, i.e., claims 37
and 38; and group IV comprising claim 54 and the claims dependent thereon,
i.e., claim 55. We thus focus our analysis on independent claims 1, 27, 36 and
54, with the dependent claims standing or falling with the claim on which they are
dependent. See In re Dance, 160 F.3d 1339, 1340 n.2, 48 USPQ2d 1635, 1636
n.2 (Fed. Cir. 1998) (noting that dependent claims not argued separately on the
merits rise or fall with the independent claim to which they relate); see also 37
CFR § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).
Claims 1-3, 8-11, 16, 17, 19, 20, 26-29, 36-38, 54 and 55, all of the claims
on appeal, stand rejected under 35 U.S.C. § 112, first paragraph, on the grounds
that the subject matter was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the time
the application was filed, had possession of the claimed invention, i.e., for lack of
adequate written description.
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