Appeal No. 2005-1383
Application No. 09/364,847
We point out that 37 C.F.R. § 1.192(c)(7)(2003) states, in relevant part, that for
each ground of rejection, an appellant must “explain 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.”
If we were to follow the arguments on page 4 of the Brief, we would not consider
the issues as they apply to claim 1, but only as they apply to claims 2 and 5 since these
claims are representative of the two groups (groups 2 and 4) that the appellants state
are separately patentable. However, because the examiner’s Answer and the Brief are
directed almost exclusively to independent claim 1, and correctly so, we would be
remiss in our role as a reviewing tribunal if we did not focus our deliberations on the
only independent claim on appeal.
With respect to the arguments on page 18 of the Brief, we find that the appellants
have simply stated that the issues are different with regard to the subject matter of
claims 2, 5 and 6, and that “no art has been cited to show” that said subject matter
would have been obvious to one of ordinary skill in the art. The appellants do not
provide any reasons as to why the referenced claims would not have been obvious
based on the applied prior art. Thus, we find that the appellants have merely pointed
out differences in the claims and have not stated why they are separately patentable.
As indicated above, such action is improper. 37 C.F.R. § 1.192(c)(7)(2003).
Nevertheless, we have included brief comments on claims 2, 5 and 6 in our
deliberations below.
2
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007