Ex parte WONG et al. - Page 7




          Appeal No. 1999-1889                                       Page 7           
          Application No. 08/366,988                                                  


          separately the patentability of dependent claim 25, they                    
          merely refer to “the same reasons as given above for claim 5,”              
          (id. at 20), from which the former claim depends.  Therefore,               
          claims 5, 17, and 25 stand or fall together in a third group;               
          we select claim 5 to represent the third group.  With these                 
          representations in mind, we address the obviousness of the                  
          claims.                                                                     


               The appellants make three arguments.  First, they                      
          argue, “Koitabashi, et al. reference ... disclose only a                    
          single absorbing material 2003.  There is no disclosure in the              
          Koitabashi, et al. reference of first and second materials in               
          surface-to-surface contact ....”  (Appeal Br. at 9.)  The                   
          examiner responds, “Koitabashi et al teaches that the                       
          ‘absorbing material 2003 is separated into three parts, and is              
          compressed beforehand, and thereafter, it is accommodated                   
          therein’ to meet the limitation as claimed.”  (Examiner’s                   
          Answer at 3.)                                                               


               “Claims are not interpreted in a vacuum, but are part of               
          and are read in light of the specification.”  Slimfold Mfg.                 







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