Appeal No. 2000-1763 Page 7
Application No. 09/227,037
appellant was distinguishing the claimed method from those of the prior art on the basis that the
prior art disclosed methods of forming a tube by extruding two materials so as to bond them
together to form a tube having only a single passageway, rather than a tubular structure with a
first passageway defined by a tube and a second passageway defined by the tube and the tube-
support structure. With regard to the independent claims of the patent, the appellant's
arguments in the second paragraph on page 8 of that response assert a distinction over the
Buluschek reference on the basis that Buluschek lacks a first material of a sufficiently pliable
material to form a seal around the nipple of a medical instrument. The appellant's remarks on
page 9 alluded to by the examiner are directed merely to a further distinction of dependent
claim 4 of the patent (claim 30 of the application prior to re-numbering) regarding the use of a
second die configured to produce a friction fit and thus do not alter our conclusion in any way.
In sum, nothing in the appellant's original disclosure or the prosecution history indicates
or suggests that the use of first and second dies in forming the tube and tube-support structure
was essential or critical to either the operation or patentability of the invention. For the2
foregoing reasons, we are of the opinion that neither the omission of the recitation of one of the
first and second dies from claims 1-14 nor the presentation of new claim 15 lacking reference
to any dies at all constitutes new matter not supported by the appellant's original disclosure.
Accordingly, we shall not sustain rejection (1) or rejection (2).
2In this respect, the case before us is analogous to In re Peters, 723 F.2d 891, 893-94, 221 USPQ 952, 953
(Fed. Cir. 1983).
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