Ex parte GIBBON et al. - Page 6




          Appeal No. 1998-1323                                                        
          Application 08/252,861                                                      


          the arguments.  See Id.; In re Hedges, 783 F.2d 1038, 1039,                 
          228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d                
          1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re                   
          Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).               
          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)].                                         
          Although the examiner cites three references in the                         
          statement of the rejection, it appears that all three                       
          references are not being relied on to reject all the indicated              
          claims.  The examiner notes that claims 1-24 substantially                  
          read on Takahashi [answer, page 4].  Cragun is cited only in                
          connection with claims 5, 6, 10-13 and 24, and Buhro is cited               
          only in connection with claims 14 and 18 [id., pages 5 and 6].              
          Therefore, it appears that the examiner bases this rejection                
          primarily on Takahashi with Cragun and Buhro used to meet                   
          specific additional limitations.  In fact, the examiner’s                   
          comments make it appear that claim 1 is essentially rejected                
          on Takahashi taken alone.                                                   
          The examiner’s explanation of this rejection is                             
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