Appeal 2007-2906
Application 10/295,315
Other claims and limitations
It is an abuse of process for an appellant to present limitations without
context in the hope that the tribunal will string them together in a winning
combination.32 Had Bayer wished to argue the patentability of any of its
claims separately, the Board rule defining appeal briefs33 provides clear
guidance on how to do so. The rule requires specific identification of claims
and arguments under separate subheadings. The rule also clearly warns that
failure to follow the rule will lead to waivers. Bayer did not use separate
headings or even identify separate claims for consideration in its brief. If the
rule is to have any meaning at all, we must not step in and make out the case
that Bayer chose not to make on its own.34
CONCLUSION
The subject matter of claim 6 would have been obvious to a person
having ordinary skill in the art at the time the application on appeal was
filed. The claims stand or fall together so the rejection of claims 1-8 is—
AFFIRMED
32 Even if we did associate the argued limitations with a claim or claims, we
would still have to guess how Bayer intended the claims to be separately
grouped. The Board cannot act as Bayer's counsel to figure out what would
be the best outcome for Bayer and group the claims accordingly. Such a
practice would be contrary to public interest and the orderly administration
of appeals.
33 § 41.37(c)(1)(vii).
34 Since Bayer is represented by a registered patent practitioner, we need not
and do not reach the problem of the unsophisticated pro se inventor.
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