Ex Parte MALLISON - Page 8




          Appeal No. 2003-1118                                                        
          Application 08/968,534                                                      


          by the “centered” limitations in claims 1 and 15 as read in light           
          of the underlying disclosure, the proposed combination of the               
          references, even if made, would not result in the subject matter            
          claimed.                                                                    
               Thus, the combined teachings of Grant and Cothrell do not              
          justify the examiner’s conclusion that the differences between              
          the subject matter set forth in independent claims 1 and 15 and             
          the prior art are such that the subject matter as a whole would             
          have been obvious at the time the invention was made to a person            
          having ordinary skill in the art.  Accordingly, we shall not                
          sustain the standing 35 U.S.C. § 103(a) rejection of claims 1 and           
          15, and dependent claims 2 through 14, as being unpatentable over           
          Grant in view of Cothrell.                                                  
          III. The 35 U.S.C. § 103(a) rejection of claims 16 and 17 as                
          being unpatentable over Healy in view of Cothrell                           
               Healy discloses a dust collection apparatus for use in a               
          tire grinding machine, and more particularly different                      
          embodiments of such an apparatus respectively adapted for use               
          with full face grinding (Figures 1 through 7), shoulder grinding            
          (Figures 8 through 12), center grinding (Figures 13 through 17)             
          and sidewall grinding (Figures 18 through 20).  As best shown in            
          Figures 5, 6, 10, 11, 14, 15 and 18, each of the embodiments                


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