Appeal No. 2000-1131 Page 6
Application No. 08/505,183
thermoplastic (col. 3, lines 3-5) and thus “overmoulded directly” as required by claim 1 and
“directly associated” as required by claim 7. The structure is then cured by heating (col. 3, lines
5-8), i.e. to vulcanize the elastomers (col. 4, lines 49-51). The composite tubular article
additionally includes an inner layer with barrier properties as required by claim 8 (col. 1, line 50
to col. 2, lines 19).
Appellants do not dispute that Stevens describes using a vulcanized elastomer of the
claimed composition directly associated with a thermoplastic of the claimed composition.
Nonetheless, we observe that some picking and choosing is necessary to obtain the claimed
composite composition. Therefore, we reverse the rejection based on 35 U.S.C. § 102.
However, because it would have been obvious to one of ordinary skill in the art to have chosen
the combinations of polymers listed by Stevens for the second and third layers of a hose, based
on a reasonable expectation that any of the combinations would have the properties desired, we
make a new ground of rejection under 35 U.S.C. § 103(a). This new ground of rejection is
limited to claims 1, 4, and 6-8.4
Appellants’ sole argument with regard to the rejection is that Stevens does not disclose or
fairly suggest the vulcanization of an elastomer onto the thermoplastic layer but merely promotes
4While Appellants failed to argue that Stevens does not teach the coextrusion process of
claim 5, as we are making a new ground of rejection we are constrained not to reject claim 5
under 35 U.S.C. § 103(a) because Stevens does not suggest coextrusion. It is not the function of
the Board to examine patent applications and we have not here conducted the type of thorough
search and examination required to determine whether claim 5 is patentable. The Examiner
should make such a determination.
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