Ex parte GROSS - Page 5




                 Appeal No. 96-1380                                                                                                                     
                 Application 08/219,189                                                                                                                 


                 to which it is transferred (by reversal of the bias on corona                                                                          
                 generator 24) for removal by the cleaning station (not shown)                                                                          
                 for the photoconductive member.                                                                                                        
                 The grouping of the claims                                                                                                             
                          Claims 1-34 stand rejected as unpatentable over the same                                                                      
                 combination of references.  Appellant's brief states (at 4)                                                                            
                 that the following two groups of claims should be treated as                                                                           
                 standing or falling together:                                                                                                          
                          (1) Claims 1, 5-8, 12-14, 18-21, and 25-30; and                                                                               
                          (2) Claims 2-4, 9-11, 15-18 [sic, 15-17 ], 22-24, and 31-             2                                                       
                 34.                                                                                                                                    
                 The examiner objects to dividing the claims into these two                                                                             
                 groups, because he believes that insofar as the rejection is                                                                           
                 concerned, the particular type of transfer member is                                                                                   
                 immaterial (Answer at 1).  While we do not agree that the type                                                                         
                 of transfer member is immaterial, we note the brief does not                                                                           
                 "explain[]                                                                                                                             
                 s why the claims of the group are believed to be separately                                                                            
                 patentable," which is a condition for giving the groups of                                                                             

                          2Group (1) includes claim 18 and its dependent                                                                                
                 claims 19-21.                                                                                                                          
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