Appeal No. 2006-2736 Page 4
Application No. 10/038,167
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) .
Here, the appellants argue claims 1-4 and 9, which are subject to the same
ground of rejection, as a group. (Appeal Br.1 at 6-12.) Although they refer to the
limitations of claim 3 in their reply brief, (Reply Br. at 4-5), the appellants' attorney
explained at oral hearing that this was not an argument for the separate patentability of
claim 3.2 To the contrary, he stipulated that claims 2-9 stand or fall with claim 1.
1We rely on and refer to the substitute appeal brief, in lieu of the original appeal
brief, because the original was defective. The original appeal brief was not considered
in deciding this appeal.
2 Of course, "it is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to reply to
matter raised in the brief of the appellee." Kaufman Company, Inc. v. Lantech, Inc., 807
F.2d 970, 973 n., 1 USPQ2d 1202, 1204 n. (Fed. Cir. 1986). "Considering an argument
advanced for the first time in a reply brief . . . is not only unfair to an appellee . . . but
also entails the risk of an improvident or ill-advised opinion on the legal issues
tendered." McBride v. Merrell Dow and Pharmaceuticals, Inc., 800 F.2d 1208, 1211
(D.C. Cir. 1986) (internal citations omitted).
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