Ex parte HERBELLEAU - Page 6




                 Appeal No. 1999-0983                                                                                                                   
                 Application No. 08/782,891                                                                                                             


                 with regard to the "equivalents" of the bead wire, so that                                                                             
                 appellant's recitation of "carcass anchoring means" for the                                                                            
                 first time in a non-original claim does not constitute new                                                                             
                 matter.   In the first place, it is not clear that "carcass3                                                                                                                         
                 anchoring means" does in fact include structure other than a                                                                           
                 bead wire, since the examiner has not identified anything                                                                              
                 known in the art which would be the equivalent of a bead wire                                                                          
                 under  112, sixth paragraph.   Secondly, we consider that the4                                                                                  
                 above-quoted disclosure from page 6, line 26, to page 7, line                                                                          
                 13, of the specification would have conveyed to one of                                                                                 
                 ordinary skill that appellant was in possession, not only of a                                                                         
                 bead wire as an element of the invention, but also of                                                                                  
                 equivalents of the bead wire.  Thus, as stated on page 7,                                                                              
                 lines 7 to 9, the arrangement of the carcass and anchoring to                                                                          
                 a bead wire is "not limitative, and other arrangements can be                                                                          
                 adopted within the bead."  Also, in lines 9 to 13 appellant                                                                            

                          3"Carcass anchoring means" was first recited in a claim                                                                       
                 when claim 4 was amended and claim 14 was added by amendment                                                                           
                 filed August 16, 1995 (Paper No. 8).                                                                                                   
                          4An equivalent structure under  112, sixth paragraph,                                                                        
                 must be a structure that was available at the time of the                                                                              
                 issuance of the claim.  Al-Site Corp. v. VSI Int'l., Inc., 174                                                                         
                 F.3d 1308, 1320, 50 USPQ2d 1161, 1168 (Fed. Cir. 1999).                                                                                
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