Ex parte MANICO et al. - Page 6




          Appeal No. 1996-2883                                                        
          Application No. 08/172,466                                                  


          Only those arguments actually made by appellants have been                  
          considered in this decision.  Arguments which appellants could              
          have made but chose not to make in the brief have not been                  
          considered [see 37 CFR    § 1.192(a)].                                      
          We consider first the rejection with respect to claims                      
          1-3, 6, 9 and 10 which stand or fall together as a group                    
          [brief, page 2].  Independent claim 1 will serve as the                     
          representative claim for this group.  With respect to claim 1,              
          the examiner cites Jones as teaching a film holder designed to              
          adapt to a smaller size film for use in larger scanning                     
          apparatus.  The examiner cites Kumanomido, Roberg or Kogane as              
          teaching a first and second sheet member forming a transparent              
          pocket therebetween, and a filmstrip which can be slid into or              
          out of the pocket.  The examiner also notes several other                   
          features of these three secondary references [answer, pages 3-              
          4].                                                                         
          Appellants basically present two arguments in support                       
          of the patentability of independent claim 1.  First,                        
          appellants point to several deficiencies in Jones with respect              
          to the recitations of claim 1.  Second, appellants argue that               
          there is no basis for combining the teachings of Jones with                 
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