Appeal No. 2006-1332 Page 4
Application No. 09/548,687
A. REJECTION OF CLAIMS 1-3 AND 5 BY BLOUNT
"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." 37 C.F.R.
§ 41.37(c)(1)(vii) (Sep. 30, 2004). When the patentability of dependent claims in
particular is not argued separately, the claims stand or fall with the claims from which
they depend. In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Here, the appellant argues claims 1-3 and 5, which are subject to the same
ground of rejection, as a group. (Appeal Br. at 6-9.) Therefore, we select claim 1 as the
sole claim on which to decide the appeal of the group.
With this representation in mind, "[r]ather than reiterate the positions of the
examiner or the appellant in toto, we focus on the point of contention therebetween." Ex
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