Federal Circuit disposition — 2010-1499

United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 10/924,633)
IN RE JEFF LOVIN, ROBERT ADAMS, AND DAN
KURUZAR
__________________________
2010-1499
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
___________________________
Decided: July 22, 2011
___________________________
JAMES R. BURDETT , Barnes & Thornburg, LLP, of
Washington, DC, argued for appellant. With him on the
brief were RICHARD B. LAZARUS ; and THOMAS J. D ONOVAN ,
of Chicago, Illinois.
SCOTT C. WEIDENFELLER, Associate Solicitor, Office of
the Solicitor, United States Patent and Trademark Office,
of Alexandria, Virginia, argued for appellee. With him on
the brief were RAYMOND T. CHEN , Solicitor, and NATHAN
K. K ELLEY, Associate Solicitor.
__________________________
Before BRYSON , M AYER, and DYK , Circuit Judges.

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IN RE LOVIN 2
D YK , Circuit Judge.
Appellants Jeff Lovin, Robert Adams, Dan Kuruzar,
and Dietmar Spindler1 (collectively “Lovin”) appeal a
decision of the Board of Patent Appeals and Interferences
(“Board”) insofar as that decision held that claims 1–15,
17–24, and 30–34 of U.S. Patent Application No.
10/924,633 (the “’633 application”) would have been
obvious. See Ex parte Lovin, No. 2009-007018 (B.P.A.I.
Feb. 25, 2010) (“Board Decision”). We affirm.
BACKGROUND
On August 24, 2004, Lovin filed the ’633 application
directed to “a method and system of friction welding.”
J.A. 103. In friction welding, a first part is rotated rap-
idly and brought into contact with a second part so that
the heat generated between the parts fuses them to-
gether. This causes material from the parts to be dis-
placed or “upset,” reducing the combined lengths of the
welded parts. The invention of the ’633 application is
designed to decrease the variation in upset between parts
from repeated use of the welding machinery. This is done
by modulating the torque applied to the rotating first
part.
The ’633 application has 34 claims. Claims 1, 8, 17,
23, 30, and 34 are independent claims; the remaining
claims depend therefrom. Independent claim 1 is illustra-
tive. The first step of this two-step method involves
acquiring data during the welding of two sample parts
and “calculating a profile” from the acquired data, includ-
ing “determining the upset formation” of the sample parts
at a variety of different speeds. J.A. 70. The second step
1 Dietmar Spindler is a named appellant, but, for
an unknown reason, he was not listed on the official
caption for this appeal.

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IN RE LOVIN 3
involves friction welding two production parts and “con-
tinuously modulating the torque applied” to the first
production part in accordance with the profile so that the
“upset formation” of the production parts “substantially
duplicates the upset formation of the . . . sample parts.”
Id.
At the heart of this dispute is whether Lovin, in his
appeal brief before the Board, adequately provided argu-
ments for the separate patentability of certain claims
pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (“Rule 41.37”).
Rule 41.37 sets forth the requirements for argument in an
appeal brief before the Board. It provides in relevant
part:
(vii) Argument. . . . For each ground of rejection
applying to two or more claims, the claims may be
argued separately or as a group. When multiple
claims subject to the same ground of rejection are
argued as a group by appellant, the Board may se-
lect a single claim from the group of claims that
are argued together to decide the appeal with re-
spect to the group of claims as to the ground of re-
jection on the basis of the selected claim alone.
Notwithstanding any other provision of this para-
graph, 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. Any claim argued sepa-
rately should be placed under a subheading identi-
fying the claim by number. Claims argued as a
group should be placed under a subheading identi-
fying the claims by number. A statement which
merely points out what a claim recites will not be
considered an argument for separate patentability
of the claim.

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IN RE LOVIN 4
37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphasis added).
Throughout prosecution before the examiner, Lovin
had presented arguments with respect to the independent
claims, but did not provide separate arguments for the
dependent claims. See, e.g., J.A. 198 (broadly applying
conclusions about independent claim 1 to dependent
claims 2–7 and 10–15, which were not separately argued).
Even with respect to the independent claims, Lovin
merely repeated the claim language and stated that the
prior art did not contain those features. The examiner
eventually rejected claims 1–24 and 30–34 for obviousness
over three prior art references: (1) U.S. Patent No.
3,712,528 (“Takagi”); (2) U.S. Patent No. 4,757,932
(“Benn”); and (3) U.S. Patent No. 6,362,456 (“Ludewig”).
Lovin filed his appeal brief to the Board on August 4,
2008. For the first time, Lovin attempted to address the
patentability of the dependent claims by listing each
claim under a separate subheading with separate argu-
ments. While his arguments for independent claims 1
and 30 were relatively well-developed, his arguments for
the dependent claims and the remaining independent
claims were not. For the dependent claims, Lovin adopted
the arguments from the corresponding independent
claims, but with respect to the additional elements of the
dependent claims, Lovin simply asserted that these
elements were not present in the prior art and asserted
non-obviousness over the combined teachings of the prior
art. Lovin’s argument for claim 11 demonstrates his
general approach:
Claim 11 is dependent on claim 1 and adds the
step of “braking the one sample part during rota-
tional deceleration of the one sample part." Claim
11 thus recites the additional braking step for

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IN RE LOVIN 5
which there is no corresponding step taught or
suggested in any of Benn et al., Takagi et al, and
Ludewig et al. The office action does not explain
the lack of a teaching or suggestion of the step of
claim 11 in the prior art. For at least this reason,
and the reasons noted above with respect to claim
1, the combination of Benn et al. Takagi et al. and
Ludewig et al. would not arrive at the claimed
subject matter and the claimed subject matter
would not have been obvious.
J.A. 61 (emphases added). Similarly, Lovin’s arguments
for independent claims 8, 17, 23, and 34 merely adopted
his arguments for independent claims 1 and 30, but did
not explain why the additional features in those claims
should be separately patentable. The examiner’s answer
responded to the arguments for each claim, citing the
column and line number where the disputed elements
could be found in the prior art. Lovin, however, declined
to submit a reply to the examiner’s answer.
The Board affirmed the examiner’s rejection of claim 1
as obvious over the prior art. With regard to independent
claims 8, 17, and 23, the Board found that Lovin had
provided the “same rationale” for non-obviousness as for
claim 1. Namely, Lovin disputed whether the prior art
“continuously modulat[ed] the torque” applied to the first
part. Because the Board found that one skilled in the art
would have known to combine the teachings of Benn and
Takagi to control the torque, the Board held that claims 1,
8, 17, and 23 would have been obvious.
The Board also affirmed the examiner’s rejection of
claim 30 as obvious over the prior art. With regard to
independent claim 34, the Board found that Lovin had
applied the same rationale as applied to claim 30.
Namely, Lovin disputed whether the prior art contained a

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IN RE LOVIN 6
“logic controller means” for storing certain information.
The Board determined that Benn taught a microprocessor
memory storing similar information and held that claims
30 and 34 would have been obvious.
The Board also affirmed the examiner’s rejection of all
the dependent claims, concluding that Lovin merely
“point[ed] out what the claims recite and then assert[ed]
that there [was] no corresponding combination of steps
taught or suggested in the applied references.” Board
Decision, slip op. at 3. Invoking Rule 41.37, the Board
concluded that: “[M]erely pointing out the differences in
what the claims cover . . . is not a substantive argument
as to the separate patentability of the claims. Accord-
ingly, claims 2–15 and 17–24 stand or fall with claim 1,
and claims 31–34 stand or fall with claim 30.” Board
Decision, slip op. at 3–4.
Lovin sought rehearing with respect to claims 2–15,
17–22, and 24, arguing that the Board had overlooked his
separate patentability arguments and should have sepa-
rately considered each claim. In denying rehearing, the
Board held that Lovin’s cursory arguments with respect to
these claims did not satisfy Rule 41.37 because “the
[a]ppellants’ statement as to what each claim recites,
followed by a statement that there is no corresponding
step in the applied references, is tantamount to merely
pointing out the differences in what the claims cover, and
i[s] not a substantive argument as to the separate pat-
entability of the claims.” Ex parte Lovin, No. 2009-
007018, slip op. at 4–5 (B.P.A.I. May 19, 2010); see also 37
C.F.R. § 41.37(c)(1)(vii) (2007). Judge Kratz dissented
from the denial of rehearing and urged that some of the
claims should have been separately considered. Appel-
lants timely appealed, and we have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).

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IN RE LOVIN 7
D ISCUSSION
On appeal, Lovin does not challenge the Board’s rejec-
tion of independent claims 1 and 30 as obvious. The
question, then, is whether the Board correctly interpreted
Rule 41.37 in refusing to separately address the obvious-
ness of claims 2–15, 17–24, and 31–34. Because these
contested claims were treated as dependent claims,2 we
refer to them as dependent claims for the sake of conven-
ience.
Lovin argues that his appeal brief before the Board
satisfied Rule 41.37 because it contained separate head-
ings and substantive arguments for each dependent
claim. Lovin maintained that the only requirement for
substantive argumentation for dependent claims is that
the applicant “point out the essential elements as com-
pared with prior claims and the inapplicability of the cited
references, which ha[d] previously been discussed in the
[applicant’s] brief.” Appellant’s Br. 12–13 (quoting In re
Beaver, 893 F.2d 329, 330 (Fed. Cir. 1989)). The PTO
responded that, under long-standing Supreme Court
authority, we should defer to the Board’s interpretation of
Rule 41.37 as requiring more than the truncated argu-
ments appearing in Lovin’s appeal brief.
The Supreme Court has long recognized that an
agency's construction of its own regulations is entitled to
substantial deference. In Bowles v. Seminole Rock &
Sand Co., 325 U.S. 410, 414 (1945), the Court deferred to
the Office of Price Administration’s interpretation of its
own regulation and held that “the ultimate criterion [in
2 Claims 8, 17, 23, and 34, though formulated as in-
dependent claims, were treated as dependent claims
because they merely confirmed the limitations of claim 1
and then added additional elements. Claims 2–7, 9–15,
18–22, 24, and 31–33 are explicitly dependent claims.

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IN RE LOVIN 8
determining the meaning of the regulation] is the admin-
istrative interpretation, which becomes of controlling
weight unless it is plainly erroneous or inconsistent with
the regulation.” Similarly, in Auer v. Robbins, 519 U.S.
452, 461 (1997), the Court sustained the Secretary of
Labor’s interpretation of its own regulation as “control-
ling” in an overtime pay dispute. See also United States v.
Cleveland Indians Baseball Co., 532 U.S. 200, 220 (2001)
(granting “substantial judicial deference” to the Internal
Revenue Service’s “longstanding” reasonable interpreta-
tion of its own regulations); Thomas Jefferson Univ. v.
Shalala, 512 U.S. 504, 512 (1994) (holding that the De-
partment of Health and Human Services’ interpretation of
a regulation must be given “controlling weight unless it is
plainly erroneous or inconsistent with the regulation”);
Udall v. Tallman, 380 U.S. 1, 16 (1964) (holding that
when a regulation must be interpreted, “a court must
necessarily look to the administrative construction of the
regulation if the meaning of the words used is in doubt”).
Congress has delegated to the PTO the rulemaking
power to “establish regulations, not inconsistent with the
law, which . . . shall govern the conduct of proceedings in
the Office.” 35 U.S.C. § 2(b)(2) (2000); see also Star Fruits
S.N.C. v. United States, 393 F.3d 1277, 1282 (Fed. Cir.
2005); Stevens v. Tamai, 366 F.3d 1325, 1333 (Fed. Cir.
2004). It is well-established that deference is owed to
decisions of the PTO in interpreting these regulations. In
In re Garner, 508 F.3d 1376, 1378 (Fed. Cir. 2007), we
held that the PTO’s interpretation of its own regulations
is entitled to “substantial deference” unless the interpre-
tation is “plainly erroneous or inconsistent with the
regulation.” See also Star Fruits, 393 F.3d at 1277 (“[The
PTO’s] interpretation of its own regulations is entitled to
substantial deference and will be accepted unless it is
plainly erroneous or inconsistent with the regulation.”); In

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IN RE LOVIN 9
re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (same);
Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash., 334
F.3d 1264, 1266 (Fed. Cir. 2003) (same).
Nonetheless, in Garner, 508 F.3d at 1378–79, and
Dethmers Manufacturing, Inc. v. Automatic Equipment
Manufacturing Co., 272 F.3d 1365, 1370 (Fed. Cir. 2001),
we held that the PTO must still follow judicial interpreta-
tions of PTO regulations set forth in the decisions of our
court. However, the Supreme Court has made clear that
this obligation is not absolute. In National Cable &
Telecommunications Association v. Brand X Internet
Services, 545 U.S. 967, 982 (2005), the Supreme Court
examined whether the stare decisis effect of an appellate
court’s interpretation would foreclose Chevron deference
to an agency’s subsequent, but contrary, interpretation of
a statute. The Court held that a judicial interpretation
would trump an agency’s construction only if the judicial
precedent “unambiguously foreclose[d] the agency’s
interpretation, and therefore contain[ed] no gap for the
agency to fill.” Id. at 982; see also Chevron U.S.A. Inc. v.
Natural Resources Defense Council, Inc., 467 U.S. 837
(1984). The principles in National Cable apply equally to
an agency’s interpretation of its own regulations. See
Levy v. Sterling Holding Co., LLC, 544 F.3d 493, 502 (3d
Cir. 2008) (holding that National Cable requires deference
to the Security and Exchange Commission’s amendments
to a regulation over a prior contrary judicial interpreta-
tion); see also Udall, 380 U.S. at 16–17 (“When the con-
struction of an administrative regulation rather than a
statute is in issue, deference is even more clearly in
order.”). Thus, we are obligated to follow our earlier
judicial decisions—in the face of a new agency interpreta-
tion—only if we had found that the language in that
decision “unambiguously foreclose[d]” the Board’s inter-
pretation. Nat’l Cable, 545 U.S. at 982.

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IN RE LOVIN 10
Lovin contends that our decisions in In re Nielson, 816
F.2d 1567 (Fed. Cir. 1987), and In re Beaver, 893 F.2d 329
(Fed. Cir. 1989), represent such binding authority and
should control the PTO’s construction of Rule 41.37.
However, neither of these cases directly confronted Rule
41.37 or its predecessor regulation, 37 C.F.R. § 1.192
(“Rule 1.192”).3 In Nielson, we held that the Board erred
in rejecting certain dependent claims because Nielson had
argued those claims separately before the examiner. 816
F.2d at 1570–71. Our opinion did not discuss the PTO’s
rules or the Board’s interpretation of those rules. Though
we found that Nielson’s argument for the nonobviousness
of certain claims was sufficient, we also held that the
Board properly rejected certain other dependent claims
because Nielson “did not challenge [those rejections] with
any reasonable specificity.”4 Id. at 1572.
In Beaver, the applicant similarly provided little in
the way of argument as to certain dependent claims. See
893 F.2d at 329–30. For instance, the following argument
for a dependent claim was rejected by the Board:
3 Rule 41.37 replaced Rule 1.192 in 2004. See Rules
of Practice Before the Board of Patent Appeals and Inter-
ferences, 69 Fed. Reg. 49960, 49962 (Aug. 12, 2004).
4 We also note that Nielson is consistent with the
Board’s interpretation of Rule 41.37. While Lovin never
treated the dependent claims separately during prosecu-
tion, the applicant in Nielson “fully argued, in prosecution
before the examiner, all the dependent claims.” Id. at
1571. Unlike the bare argumentation here, Nielson di-
rectly pointed to evidence in the prior art that taught
away from his invention. Id. (“Nielson correctly points
out that [the prior art] teaches away from the formation of
carbon dioxide snow in the pipeline because the reference
stated that ‘solid carbon dioxide particles deposit on
surfaces and reduce their effectiveness . . . .’”).

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IN RE LOVIN 11
Claim 21 is based on claim 20, and further re-
quires that the position of the film backup plate is
adjustable relative to the front wall of the maga-
zine, to achieve a fixed relationship between the
lens mount and the film when the latter is against
the backup plate.
Obviously, neither [prior art reference] dis-
closes an adjustable film backup plate.
Id. at 330. (emphasis added). The Board found that,
“apart from merely summarizing the subject matter” and
“asserting that the references do not disclose the recited
structure, appellant does not separately argue the merits
of these claims.” Ex parte Beaver, No. 87-3303, slip op. at
3 (B.P.A.I. Jan. 31, 1989). In so holding, the Board did
not interpret or rely on predecessor Rule 1.192. We
reversed the Board’s rejection, finding that Beaver had
“reasonably argued” all the dependent claims. Beaver,
893 F.2d at 330. We also noted that these claims, con-
trary to the situation here, had been separately argued
before the examiner and that “[t]here [was] no basis
whatsoever for the line drawn by the Board holding the
argument for [independent] claim 20 sufficient and that
for [dependent] claim 21 insufficient.” Id. at 330. We
thus “vacate[d] the Board’s decision for failure to review
all the appealed claims in accordance with 37 C.F.R. §§
1.191, 1.192, and 1.196.”5 Id. at 329.
Beaver does not compel rejection of the Board’s ra-
tionale in this case for two reasons. First, the rule gov-
5 37 C.F.R. § 1.191 (1989) governed the jurisdiction
and timing of appeals to the Board. 37 C.F.R. § 1.196
(1989) governed how the Board may review an examiner’s
decision. Neither regulation is relevant to the present
case.

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IN RE LOVIN 12
erning assertions of separate patentability has gone
through multiple and significant revisions, and the gov-
erning Rule 41.37 is different from the predecessor Rule
1.192 that was in place at the time of Beaver. The first
version of the regulatory language at issue was promul-
gated in June 1988 and was the version in place at the
time of the Beaver decision. This version provided that,
for grounds of rejection covering more than one claim, it
would be “presumed that the rejected claims stand or fall
together” unless the appellant makes a statement to the
contrary and “presents reasons as to why [the] appellant
consider[ed] the rejected claims to be separately pat-
entable.” 6 See 37 C.F.R. §1.192(c)(5) (1988). In 1998, a
new version of the rule was promulgated. This version
had somewhat stronger requirements for the separate
patentability of claims and specifically added cautionary
language that “[m]erely pointing out differences in what
the claims cover is not an argument as to why the claims
are separately patentable.”7 See 37 C.F.R. § 1.192(c)(7)
6 37 C.F.R. § 1.192(c)(5) (1989) provided:
For each ground of rejection . . ., it will be pre-
sumed that the rejected claims stand or fall to-
gether unless a statement is included that the
rejected claims do not stand or fall together, and .
. . the appellant presents reasons as to why appel-
lant considers the rejected claims to be separately
patentable.
7 37 C.F.R. § 1.192(c)(7) (1998) provided:
For each ground of rejection which appellant con-
tests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the

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IN RE LOVIN 13
(1998). The current rule came into existence in 2004 and
retained the “merely pointing out” language from the
1998 version. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
Because the court in Beaver could not and did not address
the current version of the Rule containing the “merely
pointing out” language, it cannot be a binding interpreta-
tion of the current rule’s requirements. See Sacco v.
United States, 452 F.3d 1305, 1308 (Fed. Cir. 2006) (find-
ing that a prior case “is not binding precedent on [a] point
because the court did not address the issue” in that prior
case); Boeing N. Am., Inc. v. Roche, 298 F.3d 1274, 1282
(Fed. Cir. 2002) (“[W]e are not bound by [a prior opinion]
on the issue . . . since [that] issue was neither argued nor
discussed in our opinion.”).
Second, even if the current Rule 41.37 and predeces-
sor Rule 1.192 (as it existed at the time of Beaver) were
the same, the holding in Beaver appears to rest largely on
the Board’s perceived inconsistent treatment of the inde-
pendent and dependent claims rather than any definitive
interpretation of predecessor Rule 1.192. This is hardly
surprising since the language governing the separate
patentability of claims in Rule 1.192 did not even exist
when Beaver filed his Appeal Brief before the Board on
March 13, 1987. Moreover, even if Beaver had interpreted
predecessor Rule 1.192, it certainly did not “unambigu-
ously foreclose” the PTO’s current interpretation of its
own regulation, as required by the Supreme Court’s
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are sepa-
rately patentable.
(emphasis added).

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IN RE LOVIN 14
decision in National Cable. See Nat’l Cable, 545 U.S. at
982.
Because our prior authority does not foreclose the
Board from interpreting Rule 41.37 or foreclose us from
deferring to the Board's interpretation, we must now
consider whether the Board’s interpretation should pre-
vail. In Star Fruits, our court made clear that the PTO
had authority by rule to require applicants to provide
information to the PTO. 393 F.3d at 1284. There is no
contention here that the PTO exceeded its authority in
interpreting Rule 41.37 to require that applicants sepa-
rately and comprehensively argue dependent claims.
As we held in Sullivan, we accept the Board’s inter-
pretation of PTO regulations unless that interpretation is
“plainly erroneous or inconsistent with the regulation.”
362 F.3d at 1326. Rule 41.37 provides:
Notwithstanding any other provision of this para-
graph, 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. Any claim argued
separately should be placed under a subheading
identifying the claim by number. . . . A statement
which merely points out what a claim recites will
not be considered an argument for separate pat-
entability of the claim.
37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphases added). We
conclude that the Board has reasonably interpreted Rule
41.37 to require applicants to articulate more substantive
arguments if they wish for individual claims to be treated

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IN RE LOVIN 15
separately.8 Although Lovin properly included separate
subheadings for each claim in his appeal brief as required
by the rule, his arguments under those subheadings
merely “point[ed] out what the claims recite[d] and then
assert[ed] that there [was] no corresponding combination
of steps taught or suggested in the applied references.”
Board Decision, slip op. at 3. The Board thus concluded
that Lovin had waived any argument for separate pat-
entability of claims 2–15, 17–24, and 31–34. This inter-
pretation of Rule 41.37 is not manifestly unreasonable.
We note also that the Board’s interpretation of Rule
41.37 is not new to this case. Rather, it reflects the
Board’s consistent interpretation of that rule since it was
promulgated in 2004.9 Thus, the Board’s interpretation
8 In a recent paper, Chief Administrative Patent
Judge Michael Fleming and three other judges from the
Board directly addressed this point:
Appellants will sometimes include separate
subheadings for dependent claims, but [if] the . . .
argument . . . merely states that the rejection
should be reversed because the prior art does not
disclose element x, where element x is merely a
quote of the claim language, [and] [t]his argument
fails to include any explanation of why the art
doesn’t show element x or why the examiner’s find-
ing that the art does show element x is in error,
[t]he panel will usually not treat such an argu-
ment as an argument for separate patentability of
the dependent claim.
Fleming, Michael et al., Effective Appellate Advocacy in
Ex Parte Appeals Before the Board of Patent Appeals and
Interferences 4–5 (Apr. 2010) (emphasis added).
9 See, e.g., Ex Parte Pea, No. 2008-005064, 2010 WL
373841 at *5 (B.P.A.I. Feb. 2, 2010) (where the appellants
had reiterated the claim language found in certain de-

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IN RE LOVIN 16
was the governing interpretation long before Lovin filed
his appeal brief to the Board in August 2008.
In sum, we hold that the Board reasonably inter-
preted Rule 41.37 to require more substantive arguments
in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding
elements were not found in the prior art. Because Lovin
did not provide such arguments, the Board did not err in
refusing to separately address claims 2–15, 17–24, and
31–34.
AFFIRMED
pendent claims and stated that “[the prior art reference]
does not disclose this aspect of the invention,” the Board
held that “a statement that merely points out what a
claim recites is not a separate argument for patentabil-
ity”); Ex parte Carlsson, No. 2007-2475, 2007 WL 4219726
at *6 (B.P.A.I. Nov. 29, 2007) (holding that “a recitation of
what each claim state[d]” along with a “bald assertion,
unsupported by specific arguments, that the claimed
limitations [were] not disclosed in any proper combination
of the prior art” was not a sufficient argument for sepa-
rate patentability); Ex parte Portnoy, No. 2004-1461, 2005
WL 951657 at *2 (B.P.A.I. 2005) (where the appellant had
“baldly asserted that the prior art [did] not teach or
suggest the features of the[ ] claims,” the Board held that
“[p]ointing out what the claim requires with no attempt to
point out how the claims patentably distinguish over the
prior art does not amount to a separate argument for
patentability”).

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