NO ERROR IN NOT CONSIDERING CLAIMS INDIVIDUALLY WHERE APPLICANT ARGUED CLAIMS IN GROUPS

In Re Tzipori, [2008-1119] (October 15, 2008) [MICHEL, Friedman, Walker] The Federal Circuit affirmed the BPAI finding of obviousness in light of a combination of five prior art references.
DISCUSSION: On appeal, Tzipori complained that the Board erroneously failed to consider his claims individually, but the Federal Circuit held that it was proper to consider claims in groups. The Federal Circuit noted that although applicants in their substitute appeal brief to the Board that "[t]he claims do not stand or fall together," they organized their claims into four groups, and argued the claims in groups. The Federal Circuit noted that the Board treated the claims in these groups, and even added a fifth group, separately discussing the applications only independent claim. 37 C.F.R. § 41.37 requires an applicant to clearly identify and separately argue those claims for which he requests the Board's specific attention.
The Federal Circuit further held that the Board applied the correct legal standard for obviousness and reached a decision supported by substantial evidence.