Appeal No. 2000-1763 Page 6
Application No. 09/227,037
heat or with a suitable adhesive. Additionally, in the embodiment of Figure 7, the inner and
outer tubes may be radially spaced to form an annulus (air passageway) therebetween, with the
inner tube retained within the outer tube by a bend (column 6, line 63, to column 7, line 12).
While the appellant's specification does disclose one exemplary method of making a tubular
device in accordance with the invention wherein a first and second die are used, this appears to
us to be merely a preferred embodiment (perhaps included to satisfy the best mode requirement
of the first paragraph of Section 112), as evidenced by the use of the term "preferably" (column
5, line 7). From our viewpoint, the appellant's specification would have conveyed to one of
ordinary skill in the art a broad teaching of forming an inner soft, resilient tube and an outer
tube of stiffer and harder material than that of the inner tube so as to form a double-walled
tubular device.
In further support of the assertion that the use of a first and second die is critical, the
examiner points to the appellant's remarks in the response (Paper No. 6) filed June 17, 1996
during the prosecution of the application for the patent (answer, pages 4 and 6). Of particular
interest to the examiner are the appellant's remarks in the last five lines on page 7 and in the
third full paragraph on page 9 of that response. After reviewing that response in its entirety
and the prior art discussed therein, we cannot conclude, as the examiner has, that the appellant
has relied upon the use of first and second dies to distinguish the claimed invention over the
prior art. Turning first to the remarks on page 7 of that response, it is our opinion that the
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