Appeal No. 2006-0909 Page 7
Application No. 09/282,320
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)). "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).1 "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.
Here, the appellants stipulate that claims 1, 2, 4-7, 9-15, and 18-20 "fall
together." (Appeal Br. at 5.) We select claim 18 from the group as representative of the
claims therein.
"With this representation in mind, rather than reiterate the positions of the
examiner or the appellants in toto, we focus on the two points of contention
1We cite to the version of the Code of Federal Regulations in effect at the time of
the appeal brief.
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