Appeal No. 2002-0175
Application No. 09/090,225
Furthermore, the examiner has not explained how and why one
of ordinary skill in the art would have substituted the tubular
member(s) of Conklin or Lee into Hibbert to obtain a tire
comprising a panel of film material being sealed length-wise
thereof to define a plurality of small diameter pressurized
tubes such that adjacent tube share a lengthwise seal as
depicted in appellant’s Figure 4.
As noted by appellant on page 6 of the brief, Hibbert
deliberately has chosen spheres in order to form appropriately
sized interstices between the outer faces of the cells, which
are filled with a suitable thick solution and vulcanized to form
a compact rubber tire. The examiner does not explain why one
having ordinary skill in the art would have been motivated to
substitute the tubular member(s) of Conklin or Lee for the
spheres of Hibbert, especially in view of this disclosure of
Hibbert.
The examiner states that “there is no indication that the
cylinders could not be made to pack as tightly, i.e., by the
sealing area between the tubes being equal to the width and
length of the tubes”. (answer, page 9). We again note that the
examiner has not explained why the references themselves would
have led one of ordinary skill in the art to combine their
teachings as proposed by the examiner. See In re Rinehart, 531
F. 2d at 1051, 189 USPQ at 147.
Here, the examiner’s unsupported logic leads us to conclude
that the examiner, in making his Section 103 rejection, has
fallen victim to the insidious effect of hindsight syndrome
wherein that which only the inventor has taught is used against
its teacher. W.L. Gore & Assocs. V. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
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