Appeal 2007-2347
Application 10/122,743
C. REJECTION AND OBJECTION
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Publication No. 2001/0049617 (“Berenson”)
and U.S. Patent Publication No. 2002/0026496 (“Boyer”). The Examiner
further objects to the Specification for formatting issues.
II. CLAIMS 1, 3, AND 6-13
“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) (2005).1
Here, Appellant argues claims 1-13, which are subject to the same
ground of rejection, as a group. (App. Br. 12-18).2 We select claim 11 as
the sole claim on which to decide the appeal of the group, except for claims
2, 4, and 5, which we address infra.3
1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.
2 Appeal Brief filed May 22, 2006.
3 Appellant improperly added new arguments for claims 2, 4, and 5 in the
Reply Brief filed August 25, 2006, purportedly in response to the
Examiner’s Answer (Jun. 26, 2006). The Answer, however, merely repeated
the rejection applied against claims 2, 4, and 5 from the Final Rejection
(May 16, 2005). However, we will consider the new arguments, even
3
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