Appeal No. 2005-0247 Page 2
Application No. 10/171,657
As a preliminary matter, we advise the appellants that copying the Statement of
Real Party in Interest, Related Appeals and Interferences, Summary of the Invention,
Status of Claims, Status of Amendments after Final Rejection, and Issues sections of
the appeal brief into their request, (Req. Reh'g at 2-6), is neither required by, nor helpful
to, the Board. That said, rather than reiterate our position and that of the appellants in
toto, we focus on the appellants' two points of contention, viz.:
· grouping of claims 1, 6, 7, 9,11-19, 24, 25, and 27
· ink ejection.
A. GROUPING OF CLAIMS 1, 6, 7, 9,11-19, 24, 25, AND 27
The appellants allege, "The Board cites Note[sic] that the Applicant only
presented arguments with respect to claim 1. . . ." (Req. Reh'g at 7.) "[T]o assure
separate review by the Board of individual claims within each group of claims subject to
a common ground of rejection, an appellant's brief to the Board must contain a clear
statement for each rejection: (a) asserting that the patentability of claims within the
group of claims subject to this rejection do not stand or fall together, and (b) identifying
which individual claim or claims within the group are separately patentable and the
reasons why the examiner's rejection should not be sustained." In re McDaniel,
293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37 C.F.R.
§1.192(c)(7) (2001)). "If the brief fails to meet either requirement, the Board is free to
select a single claim from each group of claims subject to a common ground of rejection
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