Appeal No. 2004-0459
Serial No. 09/652,997
which adheres to the indentation and to which the anti-skidder
adheres, with a non-adhering film, and to replace the anti-skidder
with uncured rubber (answer, page 9).
As indicated by the above discussions of the references
applied to claims 5 and 6, none of these references discloses
forming a chamber in a tire tread during otherwise conventional
tire formation. The examiner has not explained how the secondary
references themselves would have fairly suggested, to one of
ordinary skill in the art, replacing Nakamura’s elastic member
with an anti-adhering film and replacing Nakamura’s anti-skidder
with uncured rubber so that a chamber is formed in this manner.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). Thus, the record indicates that the motivation for using
this chamber-forming method comes from the appellants’ disclosure
rather than coming from the applied prior art and that, therefore,
the examiner used impermissible hindsight in rejecting the
appellants’ claim 5 and claim 6 which depends therefrom. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984);
In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we reverse the examiner’s rejection of claims 5 and
6.
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