Appeal No. 2005-0258 Page 6
Application No. 09/768,877
Decision, page 7. 37 CFR § 1.192(c)(7)(2002), however, does not end with a
requirement that appellants provide an assertion that the claims do not stand or
fall together. To the contrary, the Rule requires that appellants state “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.” Id., emphasis added.
III. Appellants’ argument for each claim grouping of each ground of rejection:
Appellants’ arguments relating to the third ground of rejection appear at
pages 14-17 of the Brief. At no time do appellants address the separate
patentability of claims 19 and 53 on pages 14-17. In this regard, we note that
appellants admit that “claims 18-21, 49-51 and 53-64 are argued generally” on
pages 14-17 of their Brief. See Request, page 3.
CONCLUSION
From the foregoing it is clear that appellants have not only separately
argued the second (page 13) and third rejections (pages 14-17) under separate
headers, they have provided separate claim groupings for the second and third
ground of rejection (see pages 6-7). While, we recognize appellants’ reference
to page 13 of the Brief (Request, page 3), we note that this section of the Brief
refers to a discussion of the second ground of rejection, as it relates to the
phrase “amino acids 1-47 of SEQ ID NO: 2,” and does not relate to the third
ground of rejection. Further, while appellants state (Brief, page 7, emphasis
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