Appeal 2007-0345
Application 09/812,417
not separately argued the patentability of dependent claims 8, 16, 22, and 28
with particularity,5 these claims fall with the independent claims. See In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); see
also 37 C.F.R. § 41.37(c)(1)(vii).
For at least the above reasons, the Examiner’s anticipation rejection of
claims 1-28 is sustained.
New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter two new grounds of rejection
under 35 U.S.C. § 101: (1) a new ground of rejection for claims 1-4 and 6-8,
and (2) a new ground of rejection of claims 23-28. The basis for each is set
forth in detail below.
35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Rejection of Claims 1-4 and 6-8 Under 35 U.S.C. § 101
Claims 1-4 and 6-8 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
5 Although Appellants nominally argue the limitations recited in these
claims in Item (7) in the paragraph bridging Pages 7 and 8 of the Brief,
Appellants merely reiterate the claim language without presenting specific
arguments or supporting analysis pertaining to these limitations. Merely
reciting the claim language, however, hardly suffices as a separate argument
for patentability of the claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
Therefore, Appellants have not persuasively rebutted the Examiner’s prima
facie case of anticipation for these claims.
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