Ex Parte Kane et al - Page 4



                    Appeal No. 2004-1500                                                                                                                                  
                    Application No. 09/736,673                                                                                                                            

                              means for electrically controlling movement of the tool and                                                                                 
                    for electrically selecting one of the plurality of predetermined                                                                                      
                    tire-mounting paths in response to the size of the rim and tire to                                                                                    
                    be mounted.                                                                                                                                           
                              The references set forth below are relied upon by the Examiner                                                                              
                    as evidence of obviousness:                                                                                                                           
                    Onuma                                            4,830,079                                         May  16, 1989                                      
                    Corghi                                           5,472,034                                         Dec.  5, 1995                                      
                              Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being                                                                                
                    unpatentable over Onuma in view of Corghi.                                                                                                            
                              We refer to the brief and reply brief and to the answer for a                                                                               
                    complete discussion of the opposing viewpoints expressed by the                                                                                       
                    Appellants and by the Examiner concerning this rejection.                                                                                             

                                                                                OPINION                                                                                   
                              For the reasons which follow, the above noted rejection cannot                                                                              
                    be sustained.                                                                                                                                         
                              The Examiner acknowledges that the appealed claims distinguish                                                                              
                    over Onuma by way of the independent claim 9 requirement that the                                                                                     
                    bead-mounting tool be moveable along “at least one non-circular                                                                                       
                    tire-mounting path.”  In the Examiner’s view, however, it would                                                                                       
                    have been “obvious to one skilled in the art the time the invention                                                                                   
                    was made to modify Onuma by using a bead tool of the type that has                                                                                    
                    a ‘non-circular path’ of movement because Corghi suggests a bead                                                                                      
                                                                                    44                                                                                    




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