Ex parte KORIYAMA et al. - Page 6

              Appeal No. 1998-0453                                                                                        
              Application No. 08/381,306                                                                                  


                     Appellants argue that Brooks does teach the use of an annular groove in spacers                      
              13, and that Brooks does not teach that the groove is only present on the uppermost and                     
              lowermost spacers.  (See reply brief, pages 7 and 8.)  We agree with appellants.  The                       
              examiner rebuts  this argument by referring to specific portions of columns 2 and 3 which                   
              state that more than 3 disks are present and that the grooved spacers overcome the                          
              tendency of the disks at the axial ends of the stack to distort due to the forces.  (See                    
              supplemental answer at page 3.)  Appellants refer to different portions of Brooks and                       
              conclude that every spacer will have the grooves.  We agree with appellants.  From                          
              reading the entire disclosure of Brooks, as a whole, and the uniform usage of  “spacers”                    
              throughout and further the discussion of the distribution of the load as it moves from the                  
              axial ends to the middle, it is clear that Brooks does not clearly disclose two different                   
              spacers and their use at different locations along the axis.  Moreover, claim 1 of Brooks                   
              states that a spacer is between and separates each adjoining pair of disks and each                         
              spacer has an annular groove extending radially inward from the outer cylindrical surface.                  
              (See Brooks at columns 3-4.)   In light of the disclosure of Brooks, it would be merely                     
              speculation on our part to say that the spacers                                                             


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