Appeal No. 2004-1006
Application 10/142,485
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
In order to review the examiner’s application of prior art to appealed claims 1 and 8, we
must first interpret the language thereof by giving the claim terms their broadest reasonable
interpretation in light of the written description in the specification as it would be interpreted by
one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), without reading into these claims any limitation or particular embodiment which is
disclosed in the specification. See Zletz, supra; In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978). Thus, the terms in the appealed claims must be given their ordinary meaning
unless another meaning is intended by appellant as established in the written description of their
specification. See, e.g., Morris, supra; Zletz, supra. When the specification does not contain an
express definition, a reasonable, supported interpretation of the appealed claims that differs from
that urged by appellant can be used to determine the patentability of the claims. Morris,
127 F.3d at 1055-56, 44 USPQ2d at 1028-30 (“Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the PTO can point to other
sources that support its interpretation.”). Thus, “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].” Morris, 127 F.3d at
1055-56, 44 USPQ2d at 1029. We will consider below the interpretation to be made of the claim
language where it is an issue in the application of a reference.
Considering first the ground of rejection of appealed claim 8 under § 102(b) as
anticipated by Ferhat, the examiner finds that, as shown in Ferhat Fig. 2 (see cols. 1-3), tubular
connector or coupling member 11 and choke member 19 as combined, comprise “a cylindrical
body having a center bore and opposite open first and second ends” as specified in the first clause
of appealed claim 8; internal threads 14 in the bore of tubular connector 11 engage external
threads 13 of firearm barrel 10, comprise “internal threads located in the bore adjacent the first
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