Appeal No. 2006-0502 Παγε 2
Application No. 10/051,970
At page 3 of the answer, the examiner maintains that:
claims 11-60 stand or fall together because appellant’s
brief does not include a statement that this grouping
of claims does not stand or fall together and reasons
in support thereof. See 37 CFR 1.192(c)(7).
However, at the time of filing of appellants’ brief (May 11,
2005), 37 CFR § 1.192(c) was no longer in effect, having been
replaced by 37 CFR § 41.37 (effective September 13, 2004, 69 Fed.
Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). In this regard, new rule 37 CFR § 41.37
(c)(vii) provides, in part, that:
For each ground of rejection applying to two or more
claims, the claims may be argued separately or as a
group. When multiple claims subject to the same ground
of rejection are argued as a group by appellant, the
Board may select a single claim from the group of
claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims
which appellant has grouped together shall constitute a
waiver of any argument that the Board must consider the
patentability of any grouped claim separately. Any
claim argued separately should be placed under a
subheading identifying the claim by number. Claims
argued as a group should be placed under a subheading
identifying the claims by number. A statement which
merely points out what a claim recites will not be
considered an argument for separate patentability of
the claim.
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