Appeal No. 2005-2487
Application 08/900,254
Waived Issue #3: Definition of “without inhomogeneities.” In the rejection of
record, and in the Examiner’s Answer (page 5, last 5 lines) the examiner is, and has
been throughout prosecution, reading the term as including uniformly distributing the
mixture of fibers in the sheet. The appellant has, so far as our review of the record
reveals, not challenged this interpretation of the term.
Waived Issue #4: Definition of “tension-free.” In the rejection of record, and in
the Examiner’s Answer (page 6 , lines 1-6) the examiner is, and has been throughout
prosecution, reading the term “in a tension-free manner” as including a lack of pulling or
stretching the fibrous web during calendering. The appellant has not challenged this
interpretation of the term.
By accepting these definitions, we do not signal our agreement with them.
Rather, we observe that the time for challenging them has long passed. Issues of claim
interpretation of necessity should come first before issues of patentability. The
examiner has applied a broad reading to some of these terms, and the appellant has
conceded the point by not taking a contrary position.
In other words, we will not address limitations which are not argued. Appellant's
brief is required to specify the specific limitations in the rejected claims which are not
described in the prior art or rendered obvious over the prior art. See 37 CFR §
1.192(c)(8)(iv) (1999). Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious distinctions over the
prior art."); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247, 254 (CCPA 1967) ("This
court has uniformly followed the sound rule that an issue raised below which is not
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