Ex Parte Pittaro - Page 3




               Appeal No. 2005-2057                                                                        Page 3                  
               Application No. 09/906,362                                                                                          



                       Claims 1-28 stand rejected under 35 U.S.C. § 102(e) as anticipated by U.S.                                  
               Patent No. 6,317,207 ("French").                                                                                    


                                                          II. OPINION                                                              
                       "[T]o assure separate review by the Board of individual claims within each group                            
               of claims subject to a common ground of rejection, an appellant's brief to the Board                                
               must contain a clear statement for each rejection: (a) asserting that the patentability of                          
               claims within the group of claims subject to this rejection do not stand or fall together,                          
               and (b) identifying which individual claim or claims within the group are separately                                
               patentable and the reasons why the examiner's rejection should not be sustained."  In                               
               re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37                                  
               C.F.R. §1.192(c)(7) (2001)).  "Merely pointing out differences in what the claims cover is                          
               not an argument as to why the claims are separately patentable."  37 C.F.R.                                         
               § 1.192(c)(7) (2004).  "If the brief fails to meet either requirement, the Board is free to                         
               select a single claim from each group of claims subject to a common ground of rejection                             
               as representative of all claims in that group and to decide the appeal of that rejection                            
               based solely on the selected representative claim."  McDaniel, 293 F.3d at 1383, 63                                 
               USPQ2d at 1465.                                                                                                     










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