Ex Parte O'Brien et al - Page 8



          Appeal No. 2004-0459                                                        
          Serial No. 09/652,997                                                       
               The appellants argue that “[a] tire manufacturer looking to            
          resolve the problem of producing selective tread expansion                  
          chambers would not find an incentive for accomplishing that task            
          from a disclosure that provides internal sealant-containing                 
          pockets for sealing punctures” (brief, page 9), but do not provide          
          any evidence or reasoning in support of this argument.  Because             
          Honda, Kuan, Harrington and Case disclose that placing an anti-             
          adhesive sheet between rubber layers of a tire to prevent them              
          from adhering to each other during vulcanization is an effective            
          method for forming a chamber, they would have fairly suggested, to          
          one of ordinary skill in the art, using such a method to form               
          O’Brien’s chamber.                                                          
               The appellants argue that Honda, Kuan and Harrington do not            
          indicate that their methods are separate from vulcanization and             
          are compatible with vulcanization (reply brief, pages 5-6).  As             
          discussed above, each of these references discloses that the anti-          
          adhesive sheet is placed between rubber layers prior to                     
          vulcanization.                                                              
               The appellants argue that “Case is devoid of any teaching of           
          a chamber or pocket of any kind much less an on demand expandable-          
          contractible chamber” (reply brief, page 7).  O’Brien is relied             
          upon by the examiner for a disclosure of an expandable-                     
          contractible chamber.  Case is relied upon by the examiner for a            
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