Appeal No. 2006-0502 Παγε 3
Application No. 10/051,970
Here, we observe that the examiner maintains three separate
grounds of rejection in the answer with each ground of rejection
being applied to different groupings of claims. Also, appellants
have addressed each separate ground of rejection under separate
headings in the brief. Thus, the examiner’s statement that all
of the appealed claims stand or fall together is in error not
only because the examiner applied the incorrect rule, but as a
result of the necessity to address the claims subject to each
ground of rejection, which pertain to different sets of claims,
separately, as was the case even under the replaced rule, 37 CFR
§ 1.192(c)(7). See In re McDaniel, 293 F.3d 1379, 1383-84, 63
USPQ2d 1462, 1465-66 (Fed. Cir. 2002), wherein our reviewing
court, stated:
37 C.F.R. §1.192(c)(7) does not give the Board carte
blanche to ignore the distinctions between separate grounds
of rejection and to select the broadest claim rejected on
one ground as a representative of a separate group of claims
subject to a different ground of rejection. The applicant
has the right to have each of the grounds of rejection
relied on by the Examiner reviewed independently by the
Board under 35 U.S.C. §6(b) (providing that “[t]he Board of
Patent Appeals and Interferences shall ... review adverse
decisions of examiners upon applications for patents”)
(emphasis added). Simplification and expedition of appeals
cannot justify the Board's conflating separately stated
grounds of rejection by selecting, for the purpose of
deciding an appeal as to one ground of rejection, a
representative claim which is not itself subject to that
ground of rejection. 37 C.F.R. §1.192(c)(7) does not
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