Ex Parte O'Brien et al - Page 5



          Appeal No. 2004-0459                                                        
          Serial No. 09/652,997                                                       
          the rejection of claim 20 applies, i.e., claims 1, 3 and 16.  See           
          In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2              
          (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1997).                               
                                        Claim 1                                       
               O’Brien discloses a tire comprising a tire tread                       
          segment (102) with a chamber (106), and having a controlled air             
          inlet (110) for expanding and retracting the tread segment                  
          relative to the tread surface (col. 3, lines 2-14).4  There is an           
          indentation in the tread surface at the position of the tread               
          segment (figure 1).  O’Brien does not disclose how the chamber is           
          formed.  Hence, for a suggestion of how to form the chamber, one            
          of ordinary skill in the art would have looked to other references          
          in the tire art which disclose methods for forming chambers                 
          between rubber layers in tires.                                             
               Honda discloses a method for forming a bag-like chamber for            
          holding a puncture sealant (6) (page 9).  The chamber is formed by          
          placing an anti-adhesive sheet, preferably a polyfluoroethylene             
          sheet, between a packing rubber sheet (5) and an inner liner                




               4 As acknowledged by the appellants (original claim 1), the            
          casing of steel and rubber recited in the present claim 1 is                
          conventional.                                                               
                                           5                                          




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